Publications

<p>How well you secure and protect your brand as a technology startup can make or break your company. A strong trademark can help you land funding, increase market value, hold off competition, and more. Understanding trademark fundamentals is critical to making strategic decisions around your intellectual property and avoiding pitfalls that may unintentionally hurt your company.</p>
<p>In a recent Fenwick <a href="/Events/Pages/Avoiding-Landmines-in-Picking-and-Protecting-Your-Company-Name.aspx">event </a>co-hosted with <a href="https://capitalfactory.com/" target="_blank">Capital Factory</a>, we shared tips with C-suite executives, entrepreneurs, general counsel, investors and others involved in the technology startup world on what a trademark is and its value, best practices for enforcing your trademark and common pitfalls that may affect your intellectual property rights.</p>
<h3>Add this to your toolbox</h3>
​<p>View Fenwick trademark litigation partner <a href="/professionals/Pages/ericball.aspx">Eric Ball​</a>’s presentation, “<a href="https://www.slideshare.net/FenwickWestLLP/avoiding-landmines-in-picking-and-protecting-your-company-name" target="_blank">Avoiding Landmines in Picking and Protecting Your Company Name​</a>,” for trademark basics, from devising a trademark selection and enforcement strategy to building a portfolio to help protect your most personal business asset: your name.​​</p>
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​​<img src="/PublishingImages/Webpage-Images/2017CGS-web.jpg" alt="" /> <h2><br />Corporate Governance Trends</h2>
<h3>A Comparison of Large Public Companies and Silicon Valley Companies</h3>
<p>As outside legal counsel to a wide range of public companies in the technology and life sciences industries, many of which are based in Silicon Valley, Fenwick has collected information on corporate governance in order to counsel our clients on best practices and industry norms. We have collected this data since 2003 and believe this unique body of information is useful for all Silicon Valley companies as well as other public companies in the United States and their advisers. <a href="/Pages/PubRequest-Corporate-Governance-Survey-2017.aspx">Download the complete report.</a> </p>
<p>Fenwick’s annual survey covers a variety of corporate governance practices and data for the companies included in the Standard &amp; Poor’s 100 Index (S&amp;P 100), which are often presented as a desired norm, compared to the technology and life sciences companies included in the Silicon Valley 150 Index (SV 150), where the needs and circumstances of public companies can be quite different.</p>
<p>
Comparative data is presented for the S&amp;P 100 companies and the SV 150, as well as trend information over the history of the survey. In a number of instances the report also presents data showing comparison of the top 15 (which are of a scale similar to the S&amp;P 100), top 50, middle 50 and bottom 50 companies of the SV 150 (in terms of revenue), illustrating the impact of scale on the relevant governance practices.</p>
<p>
This in-depth survey was developed as a resource for board members, senior executives, in house legal counsel and their advisers, based in Silicon Valley and throughout the United States.</p>
<p>Key Findings Include:</p>
<p><strong>Dual-Class Voting Stock Structure</strong></p>
<ul>
<li>Adoption of dual-class voting stock structures has emerged as a recent clear trend among Silicon Valley technology companies—among the mid-to-larger SV 150 companies—though it is still a small percentage of companies. </li>
<li>Historically, dual-class voting stock structures have been significantly more common among S&amp;P 100 companies than among SV 150 companies, though the frequency in the SV 150 (11.3% in 2016 to 10.9% in 2017) has surpassed the S&amp;P 100 (9.0% in both 2016 and 2017) in recent years.<strong></strong></li>
</ul>
<p><strong>Classified Boards</strong></p>
<ul>
<li>Classified boards are now significantly more common among SV 150 companies than among S&amp;P 100 companies. Compared to the prior year, classified boards remained fairly consistent, holding steady at 6.7% for the top 15 companies in the SV 150 while the S&amp;P 100 has been at 4.0% since 2016.</li>
</ul>
<p><strong>Majority Voting</strong></p>
<ul>
<li>The rate of implementation of some form of majority voting has risen substantially over the period of this survey. <strong></strong></li>
<li>The increase has been particularly dramatic among S&amp;P 100 companies, rising from 10% to 97% between the 2004 and 2017 proxy seasons. Among SV 150 companies, the rate has risen from zero in the 2005 proxy season to 59.9% in the 2017 proxy season. <strong></strong></li>
</ul>
<p><strong>Stock Ownership Guidelines</strong></p>
<ul>
<li>The prevalence of stock ownership guidelines has generally increased over time in both groups but the SV 150 only recently surpassed the level of the S&amp;P 100. This year’s edition of the survey includes additional detail regarding the minimum holding amount and period requirements for executives and directors.<strong></strong></li>
</ul>
<p><strong>Board Diversity</strong></p>
<ul>
<li>2017 continued the long-term trend in the SV 150 of increasing numbers of women directors and declining numbers of boards without women members. </li>
<li>The rate of increase in women directors for SV 150 overall continues to be higher than among S&amp;P 100 companies. When measured as a percentage of the total number of directors, the top 15 of the SV 150 now slightly exceed their S&amp;P 100 peers (the top 15 averaged 25.4% women directors in the 2017 proxy season, compared to 23.9% in the S&amp;P 100).</li>
<li>Companies with at least one woman director went from 74% to 78.2% over the past year for the SV 150. Over a two-year period the percentage of companies with at least one woman director grew by 10 percentage points.</li>
</ul>
<p><strong>Executive Officers</strong></p>
<ul>
<li>The number of executive officers tends to be substantially lower among SV 150 companies than among the S&amp;P 100, and there continues to be a general decline in the average number of executive officers per company in both groups. </li>
<li>By contrast, the percentage of companies including General Counsel, Chief Legal Officer or a Chief Technology Officer or engineering executive as “executive officers” have been on a long-term upswing.</li>
</ul>
<p>Other areas covered:</p>
<ul>
<li>Board size and meeting frequency</li>
<li>Board leadership and insider board membership</li>
<li>Committee size and meeting frequency</li>
<li>Equity, voting power ownership of executives and directors</li>
<li>Stockholder proposals</li>
</ul>
​​​​​

<p><img src="/PublishingImages/Webpage-Images/LA-2017-11-05-Video-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />The U.S. Court of Appeals for the Ninth Circuit held in <a href="http://cdn.ca9.uscourts.gov/datastore/opinions/2017/11/29/15-35449.pdf" target="_blank"><em>Eichenberger v. ESPN</em></a> that allegations that the Video Privacy Protection Act was violated are sufficient to establish Article III standing, but that the definition of “personally identifiable information” under the statute should be limited to information that would readily permit an ordinary person to identify a specific individual’s video-watching behavior. In its Nov. 29, 2017 ruling, the court held that PII does not include numerical identifiers that websites providing streaming video services use to track users’ viewing habits. Thus, while the ruling would appear to lower the bar for plaintiffs to establish standing to bring claims under the VPPA, it limits the application of the law to video streaming tracking practices. </p>
<h3>Video Privacy Protection Act</h3>
<p>The VPPA prohibits a “video tape service provider” from knowingly disclosing “personally identifiable information concerning any consumer of such provider.” 18 U.S.C. § 2710(b)(1). The statute defines “personally identifiable information” as “information which identifies a person as having requested or obtained specific video materials or services from a video tape service provider.” 18 U.S.C. § 2710(a)(3). The VPPA also provides for a private right of action by “aggrieved” parties. 18 U.S.C. § 2710(b)(1).</p>
<h3>Background</h3>
<p>In addition to its television channel, ESPN Inc. offers access to sports-related video content through its application “WatchESPN Channel,” which is available on the Roku digital streaming device. Roku allows users to view videos and other content on their televisions through internet streaming.</p>
<p>The plaintiff downloaded the WatchESPN Channel application on his Roku device and used it to watch sports-related content but did not consent to ESPN’s sharing his information with a third party. However, every time the plaintiff used his Roku device to watch an ESPN video, ESPN disclosed his Roku device serial number and the name of the video that he watched to Adobe Analytics, which the plaintiff alleged combined with information from sources other than ESPN to identify the plaintiff. Adobe gave the resulting data back to ESPN in an aggregated form. ESPN, in turn, provided advertisers with aggregated information about the demographics of its users.</p>
<p>The plaintiff sued ESPN, alleging that it had violated the VPPA and knowingly disclosed his PII by sharing his Roku device serial number and the videos he watched with Adobe because ESPN knew that Adobe could and would use this information to identify him. The district court dismissed the action, holding that the information that ESPN disclosed did not constitute “personally identifiable information” within the meaning of the VPPA.</p>
<h3>Ninth Circuit Decision</h3>
<p>The Ninth Circuit affirmed the district court’s dismissal, not for lack of standing, but for failing to state a claim. The court began by addressing the issue of standing. Citing <a href="https://scholar.google.com/scholar_case?q=spokeo+v+robins&amp;hl=en&amp;as_sdt=2006&amp;case=11810453531811593153&amp;scilh=0" target="_blank"><em>Spokeo v. Robins</em></a> (2016), the Ninth Circuit explained that Article III standing required that a plaintiff allege a “concrete and particularized” injury, which may be intangible, in the context of statutory violations, and not simply “bare procedural violation[s].” In determining whether an intangible injury is concrete, the court elaborated that “both history and the judgment of Congress play important roles.” Turning to the VPPA, the Ninth Circuit found that “Congressional judgment leaves little doubt that [the VPPA] is a substantive provision that protects concrete interests” as it protects a consumer’s substantive privacy right in his or her video-viewing history, and “every disclosure of an individual’s ‘personally identifiable information’ and video-viewing history offends the interests that the statute protects.” Accordingly, the court held that, similar to privacy torts which historically did not require “additional consequences” to be actionable, allegations of VPPA violations without any further harm, such as the one in the present case, were sufficient to confer Article III standing.</p>
<p>The Ninth Circuit then addressed whether the information shared by ESPN constituted “personally identifiable information” under the VPPA. In making this determination, the court employed the “ordinary person” test, which limits “personally identifiable information” to only information that “would readily permit an ordinary person to identify a specific individual’s video-watching behavior.” The court noted that this test looked to “what information a video service provider discloses, not to what the recipient of that information decides to do with it,” and “provides video service providers with enough guidance to comply with the VPPA’s requirements.” Applying the “ordinary person” test, the Ninth Circuit found that the plaintiff’s Roku device serial number and the names of the videos that he watched did not constitute “personally identifiable information” under the VPPA because an “ordinary person” could not use this information to identify a specific individual “unless it is combined with other information in Adobe’s possession – data that ESPN never disclosed and apparently never even possessed.”</p>
<h3>Takeaways</h3>
<p>The <em>ESPN</em> decision offers something for both plaintiffs and defendants. In holding that the VPPA protects a concrete privacy interest and allegations of VPPA violations without further harm are sufficient to meet Article III standing requirements, the Ninth Circuit has made clear that plaintiffs need not allege any economic or emotional injury to establish Article III standing under the VPPA. However, at the same time, by adopting the “ordinary person” test, the <em>ESPN</em> decision has narrowed the categories of information that would constitute “personally identifiable information” under the VPPA and provided clearer guidance for streaming video services to comply with the statute. Under the ESPN decision, not only will fewer categories of information fall under the VPPA, but video service providers will also be able to identify those categories that do more easily. In addition, the <em>ESPN</em> decision eliminates secondary VPPA liability for video service providers in the event that third parties with whom they disclose non-personally identifiable information later use that information in combination with other independently acquired information to identify specific individuals and their video-watching activity.​​​</p>

​​<p><img src="/PublishingImages/Webpage-Images/EC-2017-11-05-Tax-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />The tax reform bill passed by the Senate early Saturday morning, December 2, in a 51-49 vote contained a number of last-minute amendments which, among other things, continue to leave key equity compensation rules in flux. Representatives from both chambers of Congress are scheduled to enter into conference this week to reconcile differences between the Senate and House Bills. Following is a brief look at where things stand on the Alternative Minimum Tax (AMT) and 162(m) transition rules.</p>
<h3>Senate Bill Revives the AMT</h3>
<p>In a significant divergence from the House Bill, the Senate Bill now retains the AMT, which was initially slated for repeal by both chambers. Under current law, employees subject to the AMT incur tax on the exercise of their incentive stock options and lose the benefit of deferred taxation until sale of the underlying shares otherwise permitted under Section 422 of the Internal Revenue Code. Repeal of the AMT would have eliminated one of the concerns of private company employees upon exercise of incentive stock options. Although the Senate and House Bills continue to maintain proposals providing limited ability for “qualified employees” of private companies to defer tax on certain equity grants for up to five years, deletion of the AMT repeal would limit the liquidity alternatives available to private company employees.</p>
<h3>162(m) Transition Rules </h3>
<p>As anticipated, the Senate Bill largely aligns with the House Bill in its proposed repeal of exceptions for qualified performance-based compensation (including stock options) currently applied to the $1 million annual limit on the deductibility of executive compensation for public companies under 162(m) of the Code. The Senate Bill adds a transition rule that would exempt performance-based compensation under a written contract in effect as of November 2, 2017, provided that the contract is not subsequently materially modified. Although earlier versions of the Senate Bill required the compensation to have been vested as of December 31, 2016, to qualify for the exemption, that limitation was not included in the final bill.</p>
<p>Read our earlier analysis in “<a href="/Publications/Pages/Proposed-Tax-Reform-Bill-Stands-to-Significantly-Impact-Equity-and-Performance-Based-Compensation.aspx" target="_blank">Proposed Tax Reform Bill as Amended Stands to Significantly Impact Equity and Performance-Based Compensation</a>” for more details.​​</p>

​​<p><img src="/PublishingImages/Webpage-Images/1128Proxy-web.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />The staff of the Division of Corporation Finance of the U.S. Securities and Exchange Commission on November 1, 2017, issued a new Staff Legal Bulletin regarding shareholder proposals under Rule 14a-8. <a href="https://www.sec.gov/interps/legal/cfslb14i.htm">Staff Legal Bulletin 14I</a> is the ninth update on this contentious topic since the release of SLB 14 in 2001. This new bulletin is most notable for encouraging board of director involvement when companies seek to exclude proposals under either the “ordinary business operations” or the “economic relevance” exceptions. </p>
<h2>Background</h2>
<p>
Rule 14a-8 under the Securities Exchange Act of 1934 provides a procedure by which a shareholder can require a company to submit a discrete matter to a shareholder vote at a shareholders’ meeting and to include that matter, and the shareholder’s supporting statement, in the company’s proxy statement. The rule includes specific procedural requirements for a proposal to be properly submitted. It also contains 13 different bases for a company to exclude a properly submitted proposal. The staff has the unenviable—and time consuming—task of evaluating company and proponent arguments over the applicability of these grounds for exclusion. </p>
<p>
SLB 14I deals with two of the grounds for exclusion:</p>
<ul>
<li><em>Ordinary Business Operations.</em> Rule 14a-8(i)(7) allows a company to exclude a proposal that relates to its ordinary business operations. The staff has stated that the purpose of this exception is “to confine the resolution of ordinary business problems to management and the board of directors, since it is impracticable for shareholders to decide how to solve such problems at an annual shareholders meeting.”<a href="#_ftn1" name="_ftnref1"><sup>1</sup></a> The staff has further commented that this exception relates to the extent that a proposal “micromanages” the company. An important, and ambiguous, condition has been added by the staff to this basis for exclusion, that being that a proposal may not be excluded if “sufficiently significant” social policy issues are presented in the proposal. Applying this overlay, numerous proposals dealing with matters that would otherwise be regarded as “ordinary business” have made their way into proxy statements.<a href="#_ftn2" name="_ftnref2"><sup>2</sup></a></li>
<li><em>Economic Relevance.</em> Rule 14a-8(i)(5) allows a company to exclude a proposal that relates to operations accounting for less than 5 percent of a company’s total assets, earnings or sales and is not otherwise significantly related to the company’s business. Following a U.S. District Court ruling in 1985, the staff has deemed this exclusion to be inapplicable if the proposal was of broad social or ethical concern and the company conducted <em>any</em> amount of business related to the issue. In SLB 14I, the staff notes that it has only infrequently agreed to exclude a proposal based on this exception. </li>
</ul>
<h2>SLB 14I</h2>
<p>
SLB 14I notes that applying the ordinary business operations exclusion involves difficult judgment calls for the staff because of the “sufficiently significant” aspect of the analysis. It asserts that a company’s board of directors is well situated to analyze, determine and explain whether an issue is “sufficiently significant” because the matter transcends ordinary business and would be appropriate for a shareholder vote. This being the case, the staff expresses its expectation that a no-action letter seeking to exclude a proposal on the basis of the ordinary business operations exception would discuss the board’s analysis of the particular policy issue and its significance. The staff goes on to say that such a discussion would be helpful if it “detailed the specific process” that the board employed to “ensure that its conclusions are well-informed and well-reasoned.”</p>
<p>
While the staff does not comment on the appropriateness of its current application of the ordinary business operations exclusion, it does comment on the application of the economic relevance exception. SLB 14I expresses the staff’s belief that it has unduly limited the application of Rule 14a-8(i)(5) because it has failed to consider whether a proposal “deals with a matter that is not significantly related to the issuer’s business.” The staff indicates that in the future it will, as the rule clearly directs, focus on a proposal’s significance to the company’s business. This being the case, the economic relevance exclusion will depend on each company’s particular circumstances and may result in a matter being regarded as significant to one company and not significant to another. The staff further notes that where a proposal’s significance to a company is not apparent on its face, it will be incumbent on the proponent to demonstrate significance. While the staff’s new approach to applying the economic relevance exclusion will not be dependent on input from the company’s board, SLB 14I states that the staff will expect to see the board’s analysis of whether the subject matter is significantly related to the company’s business in the company’s no-action letter seeking to exclude a proposal on that basis. The staff notes, once again, that it will also be helpful if the no-action letter describes the board’s analytical process. </p>
<p>SLB 14I explains that in the past the staff has, essentially, applied the economic relevance exclusion of Rule 14a-8(i)(5) in lock-step with the ordinary business operations exclusion of Rule 14a-8(i)(7). Accordingly, if a proponent appropriately asserted that the subject matter of the proposal related to a significant social policy for the purposes of the latter, then that proposal would also avoid exclusion under the narrowly-applied economic relevance test. Going forward, the staff will no longer look to its analysis of a proposal under the ordinary business operations basis when determining the availability of the economic relevance basis. </p>
<p>
In addition to the new guidance regarding the bases for exclusion as discussed above, SLB 14I provides specific guidance for proponents submitting a “proposal by proxy.” It also states that the proponents may include in their supporting statements graphics to convey information about their proposal. The staff notes that such use will continue to be subject to existing rules allowing exclusion of such images if they make a proposal false or misleading or inherently vague, or if they impugn someone’s character without factual foundation. </p>
<h2>Initial Observations</h2>
<p>While the full impact of SLB 14I will only be known after it has been implemented in actual factual situations, we believe there are at least two repercussions that can be expected:</p>
<ul>
<li><em>Expanded scope of exclusions</em>. We expect that boards of directors are more likely than the staff to determine that a proposal is not of sufficient significance to be presented to shareholders, and thus excludable on the basis of either, or both, of the economic relevance or ordinary business operations bases for exclusion. The staff has not indicated that it intends for SLB 14I to either expand or contract its application of either of these bases for exclusion. However, it would not seem logical for the staff to encourage greater board of director involvement in the Rule 14a-8 process than it has in the past, and to speak to the board being “well situated” to analyze the significance of proposals, if the staff did not intend to afford some deference to determinations made by boards of directors. As a side note, the economic relevance exclusion has been so narrowly applied in the past that the changes to be made in its application going forward can only increase the availability of this exclusion. </li>
<li><em>Expanded scope of director involvement. </em>In its commentary on SLB 14I, the staff has taken pains to characterize the board involvement described in SLB 14I as a new option that is being made available to companies, rather than a new requirement. Nonetheless, with the creation of this “option” we believe that companies seeking to exclude a proposal on the basis of Rule 14a-8(i)(7), and likely also 14a-8(i)(5), will feel the need to involve their boards of directors. The staff has stated in its commentary that it would recognize an analysis of significance by a duly appointed committee of the board, but also noted that the strength of the analysis would be bolstered by having the full board pass upon it. </li>
</ul>
<p>We look forward to seeing whether companies will routinely seek to include their boards of directors in the process of seeking exclusions under the economic relevance and ordinary business operations tests of Rule 14a-8(i). Anticipating this response, one might observe that SLB 14I is somewhat presumptuous in its expectation of director involvement in the 14a-8 process, essentially affording a holder of as little as $2,000 of the company’s common stock to force a topic into the board of director’s agenda. We also look forward to the staff’s application of the guidelines of SLB 14I to specific no-action requests and observing whether SLB 14I provides meaningful relief under the two bases for the exclusion. </p>
<hr />
<div>
<div id="ftn1">
<p>
<a href="#_ftnref1" name="_ftn1">1</a> See <a href="https://www.sec.gov/rules/final/34-40018.htm">Release No. 34-40018</a> (1998 Release). </p></div>
<div id="ftn2">
<p><a href="#_ftnref2" name="_ftn2">2</a> By way of example, this condition arose out of the staff’s reversal of its no-action position where it had allowed the exclusion of a proposal calling for a company to implement non-discrimination policies with respect to sexual orientation and to specifically amend its written employment policies accordingly. See <a href="https://www.sec.gov/rules/final/34-40018.htm">1998 Release</a>. </p>
</div>
</div>
​​​​​​

<p><img src="/PublishingImages/Webpage-Images/LA-2017-11-27-Games-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />In a move that will likely benefit game developers, the U.S. Court of Appeals for the Ninth Circuit explicitly held that First Amendment protection extends to use of third-party trademarks in the commercial promotion of an artistic work. Although promotional activities fall outside the title or body of the artistic work, the court held in <a href="http://cdn.ca9.uscourts.gov/datastore/opinions/2017/11/16/16-55577.pdf" target="_blank"><em>Twentieth Century Fox Television v. Empire Distribution</em></a> that “it only takes a minor logical extension” to hold that First Amendment protection extends to the advertisement of those protected works. Whether developers use a third party’s trademark in the game’s depiction of the real world or as part of the game itself, developers can find protection under the First Amendment to commercially promote their game while displaying the third-party trademarks.</p>
<h3>The Empire Show Strikes Back </h3>
<p>The <em>Empire </em>case involved a battle between Fox’s television show <em>Empire </em>about a fictional hip hop music label “Empire Enterprises” and a real hip hop record label named Empire Distribution. Fox’s <em>Empire</em> show features songs in the episodes, and has an agreement with Columbia Records to release original music from the show. Fox actively promotes <em>Empire </em>through various commercial activities like live musical performances, radio play and consumer goods with the “Empire” brand.</p>
<p>The fight between the two began when Empire Distribution sent a letter to Fox claiming trademark infringement. Fox then filed suit seeking declaratory judgment that the <em>Empire </em>show and its associated music releases did not violate Empire Distribution’s trademark rights. And Empire Distribution counterclaimed for trademark infringement, trademark dilution, unfair competition and false advertising. Fox moved for summary judgment, relying on First Amendment protection for its use of another’s claimed trademark in an artistic work. The district court granted Fox’s motion for summary judgement on all claims and counterclaims and Empire Distribution appealed.</p>
<h3>The Ninth Circuit Extends First Amendment Protection</h3>
<p>The Ninth Circuit’s November 16, 2017 ruling in the <em>Empire </em>case expanded the coverage of the <em>Rogers </em>defense in <a href="https://scholar.google.com/scholar_case?case=1704090655237798849&amp;q=rogers+v+grimaldi&amp;hl=en&amp;as_sdt=2006" target="_blank"><em>Rogers v. Grimaldi</em></a> (2nd Cir. 1989) to cover promotional activities. Trademark infringement claims are generally analyzed under the likelihood-of-confusion test. However, under the <em>Rogers </em>defense, the First Amendment protects artistic works that use another’s trademark in the title or body of the work if the use of the trademark is: (a) artistically relevant to the expressive work; and (b) the use of the trademark is not explicitly misleading. In <em>Empire</em>, while some of Fox’s uses of the mark fell outside the title and body of the work, the court held that both prongs of the <em>Rogers </em>test were satisfied and thus Fox’s uses were protected under the First Amendment.</p>
<p>Empire Distribution had argued that the <em>Rogers </em>defense did not apply to Fox’s uses of the trademark that fell outside the title or body of the work, such as their promotional activities that included appearances by cast members in other media, radio play, online advertising, live events and the sale or licensing of consumer goods. The court rejected Fox’s argument and held that, “Although it is true that these promotional efforts technically fall outside the title or body of an expressive work, it requires only a minor logical extension of the reasoning in <em>Rogers </em>to hold that works protected under its test may be advertised and marketed by name, and we so hold.” Holding otherwise, the court stated, would destabilize the balance of First Amendment interests if the titles of expressive works were protected but could not be used to promote those works. In reaching this conclusion, the court emphasized that Fox’s promotional activities were auxiliary to the television show.</p>
<p>Next, Empire Distribution argued that the <em>Roger</em>’s test requires that the junior work refer to the senior work and thus, the <em>Empire </em>show fails the test because it does not refer to Empire Distribution. The court squarely rejected the argument. The <em>Rogers </em>test only requires that the defendant’s use of the trademark bear some artistic relevance to the underlying work. Reference to another work, the court stated, may be a component of artistic relevance, but it is not required. Here, Fox’s use of “Empire” had the necessary artistic relevance to the underlying work since “the show’s setting is in New York, the Empire State, and its subject matter is a music and entertainment conglomerate ‘Empire Enterprises,’ which is itself a figurative empire.”</p>
<p>Finally, Empire Distribution argued that the relevant inquiry for the <em>Rogers </em>test is whether a defendant’s use of the mark would confuse consumers as to the source, sponsorship or content of the work. The court again rejected Empire Distribution’s argument noting that accepting this argument would conflate the <em>Rogers </em>test with the <em>Sleekcraft </em>likelihood-of-confusion test, which applies outside of the <em>Rogers </em>context. Instead, the court held that the second prong of the <em>Rogers </em>test requires the court to inquire whether there was an “explicit indication,” an “overt claim” or “explicit misstatement” that caused consumer confusion. And because Fox’s show contained no overt claims or explicit references to Empire Distribution, the second prong of the <em>Rogers </em>test was satisfied.</p>
<h3>Takeaway: The <em>Rogers</em> Defense Can Cover Promotional Activities </h3>
<p>Where the use of a third party’s trademark has artistic relevance to the underlying work and the use is not explicitly misleading, the <em>Rogers </em>defense can extend to the promotional activities of that artistic work. So what does this mean for the gaming industry? For game developers, especially those entering the new arenas of AR or VR, this development in the law raises new benefits and considerations.</p>
<p>If the <em>Rogers </em>defense applies, not only can game developers use a third party’s trademarks without a license, but now developers may also advertise and sell other commercial products using that mark as long as it is auxiliary to the game and not explicitly misleading. This rule is particularly beneficial to developers in the AR-gaming arena since clips of the AR world often include third-party marks that exist in the real world underneath the AR.</p>
<p>Still, developers should be cautious about using another’s trademark. In <em>CI Games v. Destination Films, </em>No. 2:16-cv-05719 (C.D. Cal.), the plaintiff alleged trademark infringement based on confusion between its movie, <em>Sniper: Ghost Shooter</em>, and the defendant’s game, <em>Sniper: Ghost Warrior</em>. There, the court found that if a plaintiff could show that a defendant intentionally named its game something similar to the plaintiff’s movie, then this intent would fail the “not explicitly misleading” prong of the <em>Roger</em>’s defense. The court also held that the <em>Rogers </em>defense is better evaluated at the summary judgment stage. In this situation, defendants could be forced to wait until summary judgment—and incur significant costs in discovery and motion practice—before knowing if the defense is available.​​​​​​​​​​​​​</p>

​​<p><img src="/PublishingImages/Webpage-Images/LA-2017-11-27-Biometrics-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />The U.S. Court of Appeals for the Second Circuit on Nov. 21, 2017, affirmed the dismissal of a putative class action alleging violations of the Illinois Biometric Information Privacy Act for failing to allege a material risk of harm. Although the facts of the case, <a href="https://scholar.google.com/scholar_case?case=5349765562024322320&amp;q=santana+v.+Take-Two&amp;hl=en&amp;as_sdt=2006" target="_blank"><em>Santana v. Take-Two Interactive Software</em></a>, limit the impact of the ruling on the viability of BIPA claims, it nonetheless adds further support to the growing body of caselaw following <a href="https://scholar.google.com/scholar_case?q=spokeo+v+robins&amp;hl=en&amp;as_sdt=2006&amp;case=11810453531811593153&amp;scilh=0" target="_blank"><em>Spokeo v. Robins</em></a> finding allegations of procedural violations of privacy statutes to be insufficient to establish Article III standing.</p>
<h3>Illinois Biometric Information Privacy Act</h3>
<p>Illinois passed the BIPA—still the most sweeping law regulating the collection, storage and use of individuals’ biometric information in the United States—in 2008. BIPA requires organizations to provide written notice of their biometric information collection, storage and use practices and to obtain <em>written</em> consent before collecting an individual’s biometric data. The notice must include the purpose of the collection and the duration that the organization will use or retain the data. A “biometric identifier” is defined as “a retina or iris scan, fingerprint, voiceprint, or scan of hand or face geometry.” Once an organization has collected biometric data, BIPA requires that the date be protected in the same manner as other sensitive and confidential information using the reasonable standard of care in the organization’s industry. And BIPA requires organizations to have a publicly available, written policy stating how long the organization will retain the data and rules governing the destruction of that data. BIPA is unique among state biometric data laws in that it provides a private right of action to any person who is “aggrieved by a violation” of the law.</p>
<h3>Background</h3>
<p>Take-Two Interactive Software, Inc. develops and distributes video games, including “NBA 2K15” and “NBA 2K16.” These games have a feature called “MyPlayer,” which allows players to create personalized avatars in the games with a 3-D rendition of the player’s face. To create a MyPlayer avatar a player must first agree to terms and conditions that state: “Your face scan will be visible to you and others you play with and may be recorded or screen captured during gameplay. By proceeding, you agree and consent to such uses and other use pursuant to the End User License Agreement.” The user must then sit through a facial scanning process that takes 15 about minutes. If a player chose to play the game online in multiplayer mode, other players in that game would see the personalized avatar.</p>
<p>In 2015, the plaintiffs filed a putative class action alleging that Take-Two’s My Player feature violated BIPA. They alleged that Take-Two collected and disseminated their biometric data without their informed consent; failed to inform them of the specific purpose and duration for which their biometric data would be stored; failed to make publicly available a retention schedule or destruction guidelines; and failed to store, transmit, or protect their biometric data by using a reasonable standard of care or in a manner that is at least as protective a manner as Take-Two treats its other confidential and sensitive information.</p>
<p>The district court dismissed plaintiffs’ claims with prejudice for lack of Article III standing and failure to state a cause of action under the statute (i.e., statutory standing).</p>
<h3>Second Circuit Decision</h3>
<p>The Second Circuit began its analysis by examining the principles for determining whether a plaintiff possesses standing, noting a plaintiff must establish “first, that ‘Congress conferred the procedural right to protect a plaintiff’s concrete interests’ as to the harm in question, and second, that ‘the procedural violation presents a risk of real harm to that concrete interest.’” Because neither party disputed the first requirement, the court assumed that “BIPA’s purpose is to prevent the unauthorized use, collection, or disclosure of an individual’s biometric data.” However, the Second Circuit found that the second requirement for standing had not been met, concluding that “none of the alleged procedural violations here raise a material risk of harm to this interest.”</p>
<p>The Second Circuit found that although plaintiffs allege that Take-Two had collected and disclosed their biometric data (when they played the game with other players) without their authorization, they did not, and could not, given the detailed and lengthy scanning process, dispute that the camera was conducting a facial scan to be used in the creation of a personalized avatar. The court also found that allegations that Take-Two did not inform users of the duration it would hold their biometric data or provide notice of its retention schedule and destruction guidelines were insufficient as the plaintiffs did not show how these alleged violations presented “a material risk that their biometric data [would] be misused or disclosed.” Indeed, the plaintiffs had not alleged that “Take-Two has not or will destroy their biometric data within the period specified by the statue,” and “Take-Two lacks [retention and destruction] protocols, that its policies are inadequate, or that Take-Two is unlikely to abide by its internal procedures.” The mere technical or procedural violations of the statute were not enough to confer standing. </p>
<p>Similarly, the Second Circuit found the allegation that Take-Two had violated the data security provisions of BIPA by “transmit[ting] . . . unencrypted scans of face geometry via the open, commercial Internet,” and “stor[ing] [p]laintiffs’ face templates in a manner that associates their identity with their biometric data,” inadequate because plaintiffs had not alleged that these purported violations raised “a material risk that their biometric data will be improperly accessed by third parties.” Finally, the Second Circuit rejected the plaintiffs’ attempt to manufacture an injury by alleging that the BIPA violations deterred them from participating in biometric transactions in the future. The court held that “[p]laintiffs’ fear, without more, is insufficient to confer an Article III injury-in-fact.” Indeed, the court noted that BIPA’s legislative findings clarified that the problem of customer withdrawal from biometric transaction only arises when a customer’s biometric data had been “compromised (i.e., collected or disclosed without his or her authorization).”</p>
<h3>Takeaways</h3>
<p><em>Take-Two</em> establishes standing limitations in the Second Circuit to BIPA claims where the plaintiff is unable to allege an injury separate from a procedural violation of technical aspects of the statute’s notice and policy requirements. The breadth of the ruling is likely limited, however, by the factual circumstances of the case. The plaintiff was well-aware that Take-Two would collect, store and use the plaintiff’s facial scan—that was the entire point of the feature he used, and he sat through a lengthy facial scanning process. Whether the Second Circuit would have reached a different conclusion if the defendant had not provided <em>any</em> notice to the plaintiffs before collecting and using the plaintiff’s biometric scans remains an open question. Therefore, organizations should be careful not to read Take-Two as carte blanche to collect and use biometric data from Illinois residents without notice.</p>
<p>Nevertheless, <em>Take-Two </em>adds an arrow to the quiver of defendants challenging standing in privacy and data security cases at the pleading stage. See our prior analysis in “<a href="/publications/Pages/Second-Circuit-Holds-Procedural-FACTA-Violation-Insufficient-to-Establish-Standing.aspx" target="_blank">Second Circuit Holds Procedural FACTA Violation Insufficient to Establish Standing</a>” and “<a href="/publications/Pages/The-Seventh-Circuit-Finds-No-Standing-in-FCRA-Case-Based-on-Job-Application-Credit-Reports.aspx">The Seventh Circuit Finds No Standing in FCRA Case Based on Job Application Credit Reports</a>.” Along with <a href="https://scholar.google.com/scholar_case?q=paris+baguetter&amp;hl=en&amp;as_sdt=2006&amp;case=12762748519805797849&amp;scilh=0" target="_blank"><em>Crupar-Weinmann v. Paris Baguette America</em></a> and <a href="http://caselaw.findlaw.com/us-2nd-circuit/1874452.html"><em>Katz v. Donna Karan</em></a>, <em>Take-Two</em> supports arguments that plaintiffs in such cases must allege an injury that derives from procedural violations of privacy statutes, and cannot rely on the procedural violation alone.​​​​</p>

<p><img src="/PublishingImages/Webpage-Images/SA-2017-11-20-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />
After a record-breaking fiscal year 2016, the Securities and Exchange Commission’s Enforcement Division had a somewhat quieter year, at least in terms of the number of actions filed. The Enforcement Division released its <a href="https://www.sec.gov/files/enforcement-annual-report-2017.pdf" target="_blank">annual report</a> on November 15, detailing the Division’s activities in fiscal year 2017, which ended September 30, 2017. The report also outlined the Division’s priorities for the coming year.</p>
<p>In FY 2017, the SEC pursued 13.1 percent fewer enforcement actions, and disgorgement and penalties orders dropped by 7.1 percent. The below chart illustrates the number of filings in the past four fiscal years:</p>
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<tbody><tr>
<th class="fwtbl-head" style="text-align:left">Fiscal Year</th>
<th class="fwtbl-head">2014</th>
<th class="fwtbl-head">2015</th>
<th class="fwtbl-head">2016</th>
<th class="fwtbl-head">2017</th>
</tr>
<tr>
<td class="fwtbl-colleft">Standalone Enforcement Actions</td>
<td class="fwtbl-colcenter">413</td>
<td class="fwtbl-colcenter">507</td>
<td class="fwtbl-colcenter">548</td>
<td class="fwtbl-colcenter">446</td>
</tr>
<tr>
<td class="fwtbl-colleft">Follow-on Administrative Proceedings</td>
<td class="fwtbl-colcenter">232</td>
<td class="fwtbl-colcenter">168</td>
<td class="fwtbl-colcenter">195</td>
<td class="fwtbl-colcenter">196</td>
</tr>
<tr>
<td class="fwtbl-colleft">Delinquent Filings</td>
<td class="fwtbl-colcenter">110</td>
<td class="fwtbl-colcenter">132</td>
<td class="fwtbl-colcenter">125</td>
<td class="fwtbl-colcenter">112</td>
</tr>
<tr>
<td class="fwtbl-colleft"><strong>Total Actions</strong></td>
<td class="fwtbl-colcenter"><strong>755</strong></td>
<td class="fwtbl-colcenter"><strong> 807</strong></td>
<td class="fwtbl-colcenter"><strong>868</strong></td>
<td class="fwtbl-colcenter"><strong>754</strong></td>
</tr>
<tr>
<td class="fwtbl-colleft"><strong>Disgorgement and Penalties Orders</strong></td>
<td class="fwtbl-colcenter"><strong>$4.16 Billion</strong></td>
<td class="fwtbl-colcenter"><strong> $4.19 Billion</strong></td>
<td class="fwtbl-colcenter"><strong> $4.08 Billion</strong></td>
<td class="fwtbl-colcenter"><strong>$3.79 Billion</strong></td>
</tr>
</tbody></table>
<br /> <br />
<h3>Why the Drop in the Number of Cases?</h3>
<p>Several factors may have contributed to the decline. Some have attributed it to the change in presidential administrations, which resulted in a change in top SEC leadership. For instance, a recent Cornerstone Research publication noted that after SEC Chairman Jay Clayton’s appointment, the number of <a href="https://www.cornerstone.com/Publications/Press-Releases/SEC-Enforcement-Actions-against-Public-Companies-Decrease?utm_source=cr-update&amp;utm_medium=email&amp;utm_campaign=sec-FY2017&amp;utm_term=SEC" target="_blank">enforcement actions against public companies dropped precipitously</a>.</p>
<p>On the other hand, the SEC believes the drop in enforcement actions is almost entirely due to the conclusion of the SEC’s <a href="https://www.sec.gov/divisions/enforce/municipalities-continuing-disclosure-cooperation-initiative.shtml" target="_blank">Municipalities Continuing Disclosure Cooperation Initiative</a> (MCDC). The program encouraged self-reporting of fraud in municipal bond offerings. If MCDC proceedings were excluded from FY 2016, the SEC only filed 30 more enforcement actions in FY 2016 than in FY 2017, making the drop in filed cases much less striking.</p>
<h3>Issuer Reporting and Accounting Cases Represent Over 20 Percent of Filed Cases</h3>
<p>For public companies, the message is different. Although the absolute number of cases filed decreased, the number of issuer disclosure and accounting fraud cases increased as a percentage of the SEC’s caseload. In FY 2017, 21 percent of the filed enforcement actions involved issuer reporting violations or actions against public company auditors, compared with 17 percent of cases in FY 2016. The 2017 increase also represents a more than 50 percent increase from FY 2013 and evidences an ongoing trend of increased enforcement in this area. Clearly, the numerous SEC initiatives started a few years ago to focus resources on detecting and investigating issuer reporting violations have resulted in such cases becoming the largest percentage of the SEC’s filed cases.</p>
<h3>What’s Ahead in 2018? New Enforcement Directors Share Their Priorities</h3>
<p>In addition to discussing the outcomes of FY 2017, the new SEC Enforcement co-directors outlined five principles that would guide them going forward, all of which are pretty much in line with previous goals of Enforcement leadership:</p>
<ul>
<li><em>Focus on the Main Street Investor:</em> The SEC expressed its renewed commitment to prioritize protecting average, “Main Street” investors. To do so, the SEC announced the creation of the Retail Strategy Task Force to identify and address investor risk.</li>
<li><em>Focus on Individual Accountability:</em> In an attempt to increase deterrence, the SEC indicated that it would focus on investigation and prosecution of cases against individuals, and would continue to aggressively seek disgorgement and penalties against such wrongdoers. While this priority is not new, the emphasis on charging and penalizing individuals likely signals some skepticism about over-penalizing entities, especially public companies whose current shareholders shoulder the burden of monetary penalties.</li>
<li><em>Keep Pace With Technological Change:</em> In September, the SEC announced the creation of a specialized Cyber Unit to investigate and prosecute technologically-driven securities violations. The Enforcement co-directors emphasized that the Cyber Unit will play an important role in ensuring that the SEC keeps pace with emerging threats. Expect to see cases being investigated by the Cyber Unit in the cryptocurrency space, including cases targeting unregistered securities offerings designated as initial coin offerings (ICOs). If, as anticipated, the SEC issues updated guidance on public company cyber disclosure requirements, expect to see more investigations targeting companies for inadequate disclosure of cyber incidents that materially affect the issuer’s business.</li>
<li><em>Impose Sanctions That Most Effectively Further Enforcement Goals:</em> In addition to focusing on individual accountability, the SEC noted that it would also prioritize sanctions that it feels are the most effective: monetary penalties, barring wrongdoers from the securities industry, and tailored relief such as undertakings to fix internal controls or other processes.</li>
<li><em>Constantly Assess the Allocation of SEC Resources</em><strong>: </strong>Finally, the Enforcement Division highlighted that it would remain committed to using its professionals as effectively and efficiently as possible. This may reflect the leadership’s understanding that new resources will be limited under the Trump administration.</li>
</ul>
<h3>Conclusion</h3>
<p>The release of this year’s SEC Enforcement Division annual report is sure to spur articles noting the drop in number of cases filed and speculating that enforcement is being rolled back under the new leadership. Public companies and other market participants should not make the mistake of believing such conjecture. The Enforcement Division has steadily increased its headcount over the past years, and has developed new technological resources that enable its professionals to find misconduct that would have gone undetected previously, such as sophisticated accounting maneuvers. Moreover, all signs indicate that the SEC’s whistleblower program will continue generating new leads. Although the number of filed cases may not again approach the FY 2016 high in the near future, the SEC’s continued focus on financial reporting and cyber issues means that companies must remain focused on compliance and prevention of misconduct.​​​​</p>

​​<p><img src="/PublishingImages/Webpage-Images/LA-2017-11-16-Glassdoor-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />In a case with free speech implications, the U.S. Court of Appeals for the Ninth Circuit on November 8, 2017, affirmed the denial of Glassdoor, Inc.’s motion to quash a grand jury subpoena for the identities of the Glassdoor users who anonymously posted about a government contractor under investigation. The court held <a href="http://cdn.ca9.uscourts.gov/datastore/opinions/2017/11/08/17-16221.pdf" target="_blank">in <em>U.S v. Glassdoor</em></a> that because Glassdoor had neither alleged nor established bad faith on the government’s part in investigating the contractor, enforcement of the subpoena did not violate Glassdoor users’ First Amendment rights. The ruling highlights the difficulties that online platforms face when government entities seek user information in support of an ongoing criminal investigation.</p>
<h3>Background
</h3>
<p>Glassdoor operates a website—Glassdoor.com—where employees post reviews of their experiences at different companies. While Glassdoor reviews are all anonymous, users trying to submit a review must provide their e-mail address, which is not disclosed on the website. Glassdoor’s terms of use and privacy policy also state that Glassdoor will disclose user data if it has a good faith belief that such disclosure is necessary to comply with relevant laws or respond to subpoenas.</p>
<p>In March 2017, the government served Glassdoor with a subpoena as part of a federal grand jury investigation into a government contractor who administered two U.S. Department of Veterans Affairs healthcare programs. The subpoena required Glassdoor to produce every company review for the contractor’s company, as well as associated “reviewer information”—“internet protocol addresses and logs associated with all reviews including date and time of post, username, email address, resume, billing information such as first name, last name, credit card information, billing address, payment history, and any additional contact information available.” In response to Glassdoor’s First Amendment concerns, the government limited its request to user information associated with eight specific reviews. The government indicated that the requested information was to enable it to contact reviewers as potential witnesses to certain business practices relevant to its investigation.</p>
<p>The district court denied Glassdoor’s motion to quash, holding that Glassdoor had not shown that the grand jury investigation was conducted in bad faith, pursuant to the test established by the U.S. Supreme Court in <a href="https://scholar.google.com/scholar_case?case=11598860258825518787&amp;q=Branzburg+v.+Hayes&amp;hl=en&amp;as_sdt=2006" target="_blank"><em>Branzburg v. Hayes</em></a>.</p>
<h3>Ninth Circuit Holding
</h3>
<p>The Ninth Circuit affirmed the district court’s denial of Glassdoor’s motion to quash, and sustained the contempt order entered to enforce it. As a preliminary issue, the court found that Glassdoor had standing to assert the rights of its users—a position that the government did not challenge.</p>
<p>Glassdoor argued that the subpoena violated the First Amendment rights of its users by infringing on their rights to associational privacy and anonymous speech. The Ninth Circuit rejected this argument, reasoning that the Supreme Court’s expressive-association jurisprudence involves people who associate to advance shared views or “join in a common endeavor”—not those who “happen to use a common platform to anonymously express their individual views.” Because Glassdoor users are necessarily strangers to each other as anonymous posters, they cannot engage in dialogue or a common endeavor. The Ninth Circuit also held that the right to anonymous speech is limited depending on the circumstances and the type of speech at issue. In deciding this issue, the court applied the “good faith” standard established in <em>Branzburg</em>.</p>
<p>In <em>Branzburg</em>, the Supreme Court held that a reporter who had promised his sources anonymity must nonetheless cooperate with a grand jury investigation unless there was evidence that the investigation was being conducted in bad faith. The Ninth Circuit found Glassdoor’s position akin to that of reporters in that Glassdoor gathers and publishes information from sources it has promised anonymity, and anonymity is an essential element of its business practice. The court held that First Amendment-protected activities, such as news gathering, speech or association, do not shield a person from being required to cooperate with a good-faith grand jury investigation. In addition, the Ninth Circuit noted that unlike <em>Branzburg</em>, where at least two reporters had promised to maintain anonymity of their sources, Glassdoor’s privacy policy had notified users that it may reveal user information in response to a government subpoena or court order. Whereas the sources in <em>Branzburg</em> had a reasonable expectation of anonymity, the Ninth Circuit found that Glassdoor users did not have any reasonable expectation of “complete privacy.”</p>
<h3><em>Bursey v. United States</em>
</h3>
<p>In finding <em>Branzburg</em> the applicable standard in the case, the Ninth Circuit rejected Glassdoor’s argument that <a href="https://scholar.google.com/scholar_case?case=6891245884980933168&amp;q=Bursey+v.+United+States+&amp;hl=en&amp;as_sdt=2006" target="_blank"><em>Bursey v. United States</em></a> was controlling. In <em>Bursey</em>, the Ninth Circuit held that when grand jury investigations implicate First Amendment rights, the government may not compel potential witnesses to answer questions unless it establishes (1) it has an “immediate, substantial and subordinating” interest in the subject matter of the investigation; (2) that there is a “substantial connection” between the information it seeks and its compelling interest; and (3) that the means of obtaining the information is “not more drastic than necessary” to advance that interest. The court distinguished <em>Bursey </em>on two grounds. In <em>Bursey</em>, the grand jury had asked questions about the inner workings of the <em>Black Panther</em> newspaper and its staff that were not substantially related to its investigation into death threats against President Nixon. There was also evidence that the government was engaged in a “fishing expedition” to gather information about a dissident group. The court noted that, in contrast, Glassdoor had not proffered any evidence of improper government conduct, and the government had limited its subpoena to eight Glassdoor users who appeared to have relevant information concerning the investigation.</p>
<p>Applying <em>Branzburg</em>, the Ninth Circuit concluded that the government had not acted in bad faith. Glassdoor had not asserted any acts of bad faith, and the information the government sought would assist the grand jury in its investigation. As a matter of policy, the Ninth Circuit also found that applying <em>Branzburg</em> in this case would be more consistent with the nature and importance of grand jury proceedings, as subjecting the government to the “compelling interest” test would burden the process and threaten the secrecy of grand jury proceedings. The court further concluded that, even if <em>Bursey</em> applied, Glassdoor would still have to comply with the subpoena as the government had a clear and compelling interest in investigating potential violations of federal law by a government contractor; there was a substantial connection between the investigation and the eight Glassdoor users that the government had identified; and any infringement of the Glassdoor users’ First Amendment rights was only “incidental” and no more drastic than necessary to achieve the government’s compelling interests.</p>
<h3>Takeaways
</h3>
<p>The implications of the <em>Glassdoor</em> decision are significant for companies that offer online forums for users to anonymously express their views. The <em>Glassdoor</em> decision makes it extremely difficult for these companies to prevail on First Amendment challenges to government subpoenas and search warrants seeking information concerning these users, provided that the government requests are sufficiently tailored to evidence relevant to the crime under investigation. By applying the <em>Branzburg</em> standard and requiring these companies to establish facts demonstrating that the government is acting in bad faith in connection with its subpoena or search warrant, the Ninth Circuit has increased the likelihood that motions to quash like the one in the <em>Glassdoor</em> case will fail. Companies, therefore, should review their privacy policies to ensure that they adequately communicate that they may have to disclose user information in the event that they are served with a subpoena or search warrant seeking that information.​​​​​​​​​​</p>

<p><img src="/PublishingImages/Webpage-Images/EC-2017-11-15-TaxCutsVC-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" /><span style="font-size:15px">Paving the way for a net-win for technology companies, Senate Finance Committee Chairman Orrin Hatch (R-Utah) released a modified chairman’s mark to the Tax Cuts and Jobs Act that brings treatment of equity and performance-based compensation under the Senate Bill in substantial conformity with the bill reported by the House Ways and Means Committee last week. Most importantly, the modified mark alleviates concerns about accelerated taxation of options and restricted stock units (RSUs), and enables certain private company employees to defer taxation on options and RSUs for up to five years. </span></p>
<h3>Adverse Revisions to Deferred Compensation Rules Stricken</h3>
<p>Consistent with the status quo, stock options granted at fair market value will not be taxed on vesting. Unless a deferral election is made as described below, any gain received on the exercise of non-qualified stock options will continue to be taxed at ordinary income rates. Incentive stock options will continue to be eligible for preferential treatment that delays taxation at capital gains rates until a sale of the shares acquired on exercise and will benefit from the proposed repeal of the Alternative Minimum Tax.</p>
<h3>Deferred Taxation for Eligible Start-Up Employees </h3>
<p>In a much anticipated step to ease liquidity concerns for start-up employees, the modified Senate Bill, like the House Bill, permits qualifying private company employees to defer taxable income on the exercise of options for up to five years. The Senate Bill goes further to permit eligible employees to defer taxable income otherwise recognized upon settlement of RSUs. Both bills exclude the CEO, CFO, certain highly compensated individuals and 1% stockholders from eligibility to make deferral elections. Read our previous analysis in “<a href="/Publications/Pages/Proposed-Tax-Reform-Bill-Stands-to-Significantly-Impact-Equity-and-Performance-Based-Compensation.aspx" target="_blank">Proposed Tax Reform Bill as Amended Stands to Significantly Impact Equity and Performance-Based Compensation</a>.”</p>
<h3>Transition Rules Under 162(m) Provide Limited Utility</h3>
<p>Both the House and Senate Bills propose to repeal exceptions for qualified performance-based compensation, including options, currently provided under Section 162(m) of the Internal Revenue Code. The Senate Bill adds a limited transition rule that would exempt performance-based compensation in effect as of November 2, 2017, provided that the compensation was no longer subject to a substantial risk of forfeiture on or before December 31, 2016. </p>
<p>Notably, existing Treasury Regulations that provide grandfather rules for newly public companies appear to remain intact. Under these existing rules, newly public companies are generally not subject to the $1 million deduction limitation imposed by 162(m) until the first annual stockholder meeting at which directors are elected occurring three calendars years following the initial public offering.</p>
<h3>Continued Monitoring</h3>
<p>Fenwick &amp; West will continue to monitor and report on legislative developments as they unfold in the coming days.​​​</p>

<p><img src="/PublishingImages/Webpage-Images/PA-2107-11-13-COPA-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />The Federal Trade Commission on October 23, 2017, provided <a href="https://www.ftc.gov/news-events/press-releases/2017/10/ftc-provides-additional-guidance-coppa-voice-recordings" target="_blank">guidance</a> on how it will enforce the Children’s Online Privacy Protection Act (COPPA)<sup>1</sup> with respect to audio recordings of children. This comes as part of a wave of increased attention to children’s privacy on websites, apps, and internet-connected toys. In this article, we summarize the new guidance and provide five practical tips that app developers and toymakers should follow to comply.</p>
<h3>COPPA Requires Parental Consent to Collect Children’s Personal Info </h3>
<p>Under COPPA, voice recordings are considered personal information. The law imposes notice and verifiable parental consent requirements on the operators of websites or online services that are directed toward children under the age of 13 or for operators who have actual knowledge they are collecting or storing &quot;personal information&quot; from children under the age of 13. In 1991, the FTC issued the <a href="https://www.ftc.gov/system/files/documents/public_statements/1266473/coppa_policy_statement_audiorecordings.pdf?utm_source=govdelivery" target="_blank">COPPA Rule</a>,<sup>2</sup> which implements COPPA and defines “personal information” to include data such as names, addresses and social security numbers. In 2013, the FTC updated the COPPA Rule and expanded the definition of personal information to include photographs, videos and audio files.</p>
<h3>The FTC Now Says It Will Not Require Parental Consent if Children’s Voices Are Recorded Solely to Replace Written Words and Are Immediately Deleted After Transcription</h3>
<p>After the 2013 amendment to the COPPA Rule, companies sought an exemption from COPPA’s parental consent requirement when they collected audio not to personally identify a child, but to initiate a voice command from the child, such as a speech-to-text search function or fulfilling a request.</p>
<p>The FTC finally agreed. In its guidance last month, the FTC acknowledged the value of voice commands for certain consumers, such as children who have not yet learned to write, or the disabled. Accordingly, the FTC announced a new enforcement policy where it will not enforce the parental consent requirement for the limited circumstances where audio of a child’s voice is collected solely for the purpose of replacing written words and is then immediately deleted after transcription. Two examples provided by the FTC include:</p>
<ul>
<li>Converting speech to text to perform a search or</li>
<li>Collecting audio for the purpose of instructing a command or request to the website, app or toy.</li>
</ul>
<p>While these examples are still considered “collection” under COPPA, operators do not need to obtain parental consent as long as the audio file is promptly destroyed after the brief moment necessary to carry out the purpose of replacing written words. Yet the operator must still include these collection practices in its privacy policy. The FTC wants parents to know that these files are collected only for a limited use and thereafter destroyed.</p>
<h3>Five Tips to Help Comply with the New Guidance</h3>
<p>As with any regulation as technical as COPPA, collection practices will be analyzed on a case-by-case basis. That said, the following are steps that leading manufacturers of children’s toys and mobile apps are taking to comply:</p>
<ol>
<li><em>Assessing whether company websites, apps or internet-connected toys collect audio files from children: </em> Understanding whether audio files are being collected and how they are being used is the first step to determining the impact of the new COPPA guidance. Generally, online services that are directed to children under 13 need verifiable parental consent before collecting voice recordings. Under the new guidance, a company may not have to get verifiable parental consent before collecting audio files from children as long as the audio is being used to replace text-based commands and is not used for any other purpose (like behavioral profiling or identification), are not shared, and are deleted immediately after replacing written words.</li>
<li><em>Including collection and deletion practices in company privacy policies, even if they collect audio files solely to replace written words: </em> The FTC wants to keep parents informed.</li>
<li><em>Reviewing company security (in response to FBI warnings):</em> While not part of the FTC guidance, leading companies are reviewing the security, access controls, encryption, monitoring and other safeguards around children’s voice recordings. In <a href="https://www.ic3.gov/media/2017/171017-1.aspx" target="_blank">October</a> and <a href="https://www.ic3.gov/media/2017/170717.aspx" target="_blank">July</a>, the FBI issued a public service announcement warning of its growing concern of cyber criminals targeting unsecure IoT devices, including toys. Specifically, the FBI issued a warning to consumers that while many of these toys are purchased for their ability to tailor behaviors based on user interactions, the data that is collected from microphones, cameras and sensors could put the privacy and security of the child at risk if the company lacks adequate security measures.</li>
<li><em>Assessing global/GDPR obligations: </em> While audio files are not specifically addressed in other legislation, the forthcoming EU General Data Protection Regulation and other regulations globally are starting to increase in the countries where parental consent is required prior to collecting personal data of children younger than 13 (and even up to 16 in certain EU member countries).</li>
<li><em>Using machine learning cautiously and disclosing in company privacy policies: </em> Parental consent is still needed if the toy or app asks for personal information by voice, such as asking users to say their name. Yet, it is unclear how the FTC will approach the collection of audio files that are run through machine learning processes or other databases in order to improve abilities to respond to a voice command or requests based on who’s asking. Leading companies are starting to disclose in their privacy policies machine learning given that the FTC might consider machine learning to be a use beyond solely replacing written words, and that would require parental consent in advance.</li>
</ol>
<br />
<br />
<hr />
<p><sup>1</sup> 15 U.S.C. §§ 6501-6505.<br />
<sup>2</sup> 16 CFR Part 312.</p>
​

<p><img src="/PublishingImages/Webpage-Images/LA-2107-11-13-Deindex-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" />
Earlier this year, the Supreme Court of Canada upheld a lower court order ordering Google to de-index a website from its global search results. In its decision, the Canadian high court rejected Google’s arguments that such an order would violate international rules of comity and hinder freedom of expression. In response, Google took the fight back to the U.S. District Court for the Northern District of California, where it sought relief from the global reach of the Canadian injunction order. On November 2, 2017, the Northern District of California sided with Google and granted a motion for preliminary injunction to prevent the enforcement of the Canadian order in the United States. The Northern District’s ruling marks an early blow to the rising trend of global injunctions and demonstrates the willingness of American courts to act as bulwarks against foreign orders threatening speech-related interests, including the statutory immunities under Section 230 of the Communications Decency Act.</p>
<h3>Background</h3>
<p>The Canadian order comes from a dispute between two Canadian computer hardware companies. In 2011, Equustek Solutions, Inc. sued Datalink, a rival computer hardware distributer and seller, for stealing trade secrets and passing off its products as Equustek’s goods to consumers. After the trial court ruled against Datalink, the company refused to comply and moved its business operations out of Canada to parts unknown. Equustek then sought to enforce against non-party Google the injunction it had obtained against Equustek. Though Google blocked over 300 Datalink-related websites from its Canada-specific search results, Equustek pressed for an additional court order to force Google to remove Datalink websites from Google’s global search results. The trial court granted the order and required Google to de-index the results worldwide. Google complied but appealed. The Court of Appeal of British Columbia and the Supreme Court of Canada affirmed. The Supreme Court saw the order as the only practicable way to prevent further harm to Equustek. For more background, read Fenwick’s analysis in “<a href="/publications/pages/what-canadian-supreme-courts-landmark-decision-means-for-tech-companies-big-and-small.aspx" target="_blank">What Canadian Supreme Court's Landmark Decision Means for Tech Companies Big and Small.</a>”</p>
<p>Following the Supreme Court of Canada’s decision, Google brought a declaratory judgment action, <a href="https://scholar.google.com/scholar_case?case=12468495050503425691&amp;q=Google+LLC+v.+Equustek+Solutions+Inc&amp;hl=en&amp;as_sdt=2006" target="_blank"><em>Google v. Equustek Solutions</em></a>, in the Northern District of California. Google’s lawsuit sought relief against the global reach of the Canadian order and moved for a preliminary injunction. In its motion and complaint, Google argued that the Canadian order conflicted with the First Amendment, disregarded the Communications Decency Act’s immunity for interactive computer service providers, and violated the principles of international comity.</p>
<p>Equustek failed to appear in the lawsuit or oppose Google’s motion for a preliminary injunction.</p>
<h3>Northern District of California’s Decision</h3>
<p>The court found that Google was entitled to preliminary relief solely based on its likely entitlement to immunity based on Section 230 of the Communications Decency Act. Specifically, the court held that “the Canadian order undermines the policy goals of Section 230 and threatens free speech on the global internet.”</p>
<p>In order to qualify for immunity under Section 230 of the Communications Decency Act, a party must show that 1) it is a provider or user of an interactive computer service, 2) the information at issue was provided by another information contention provider, and 3) the dispute seeks to hold the party liable as the publisher or speaker of the information at issue. The court found that Google is without a doubt a provider of interactive computer services, and that Datalink—not Google—was the provider of the information at issue. Since the Canadian order held Google liable as the “publisher or speaker” of the information on Datalink’s websites, the court found that the Communications Decency Act likely barred enforcement of the order against Google and granted the motion for preliminary injunctive relief.</p>
<h3>Importance</h3>
<p>Because Equustek did not oppose Google’s motion for a preliminary injunction, or for that matter even appear in the lawsuit, it is important not to read too much into the Northern District’s <em>Equustek</em> ruling. Nevertheless, its decision demonstrates that American courts recognize the important speech interests that injunctions against non-party service providers implicate and suggests a willingness to block U.S. enforcement of orders by foreign courts that conflict with United States policy. It is still far too early to tell where the debate over global injunctions will lead. But the Northern District’s ruling may require litigants in other countries to recognize that the “global” injunctions they seek may not be global in practice.​​​​</p>

<p><img src="/PublishingImages/Webpage-Images/EC-2017-11-10-Tax-Cuts-WEBPAGE.jpg" align="left" width="190" height="246" alt="" style="margin:5px 35px 20px 0px" /><span style="font-size:15px">
The Joint Committee on Taxation released a description of the Senate Chairman’s Mark to the proposed Tax Cuts and Jobs Act on November 9, 2017, reintroducing adverse equity and performance-based compensation tax provisions that were ultimately stricken from the version approved by the House Ways and Means Committee. The Senate description also fails to include much anticipated amendments earlier introduced and approved by the House Ways and Means Committee, which would have enabled private company employees to defer taxation on certain stock option grants for up to five years.</span></p>
<h3>Changes to Deferred Compensation Rules Could Accelerate Taxation</h3>
<p>The Senate bill reinstates the adverse equity and performance-based compensation provisions from prior versions of the House bill that would repeal Section 409A of the Internal Revenue Code (the Code). In particular, the Senate bill tracks the House’s initial proposal to add a new Section 409B to the Code, which would eliminate the ability to defer compensation and instead impose taxation (including income inclusion, wage withholding and W-2 reporting obligations) at the time any payment or award ceases to be subject to “future performance of substantial services.” The implementation of these rules would also require companies to fully re-examine existing deferred compensation arrangements, including cash incentive plans and severance agreements.</p>
<ul>
<li><em>General Taxation of Equity Awards on Vesting</em>. Reinstatement of these earlier provisions by the Senate would result in taxation of non-qualified stock options and other equity awards upon vesting. This would create substantial liquidity concerns for employees and could put pressure on employers to facilitate net exercise and net settlement scenarios, or to implement design changes to their equity compensation practices. Notably, incentive stock options (ISOs) would be exempt from such treatment and, in conjunction with the repeal of the alternative minimum tax, could become more valued equity incentives (see below for more details). The Senate bill, like earlier versions of the House bill, does not clarify how vested equity awards would be valued for the purposes of taxation. However, because ISOs must be granted at fair market value, we presume “409A valuations” would remain applicable.</li>
<br />
<li><em>Incentive Stock Options May Become More Attractive with Repeal of AMT, But Have Significant Limitations.</em> Consistent with the House bill, the Senate bill leaves Section 422 of the Code, governing the taxation of ISOs, untouched. As a result, ISOs may continue to offer employees eligibility to receive favorable tax treatment by deferring taxation until sale with the added benefit of capital gains treatment not available for non-qualified stock options. In addition, both the House and Senate bills include a proposal to eliminate the alternative minimum tax (the AMT) which currently has the effect of eliminating tax benefits otherwise available ISOs. A repeal of the AMT could make ISOs an even more attractive benefit for employees.<br />
<br />
However, ISOs would still remain subject to substantial restrictions that may limit their utility under the proposed tax regime. In particular, under the current tax rules, the total aggregate fair value of ISOs that become exercisable for an individual employee for the first time within a calendar year may not exceed $100,000. ISOs that fail to comply with this provision are treated as non-qualified stock options. Companies with higher valuations would easily hit this threshold for executives and highly-paid employees and therefore would have limited reprieve from the changed deferred compensation rules.</li>
<br />
<li><em>Potential Relief for Private Companies in Limbo</em>. The House bill as ultimately approved included amendments by House Ways and Committee Chairman Kevin Brady (R-TX), which would permit certain private company employees to defer income on the exercise of options for up to five years. The Senate bill does not incorporate any similar provisions, and as a result, fails to provide any mitigating measures for private companies that will be most impacted by the proposed changes to the deferred compensation rules.</li>
<br />
<li><em>Special Consideration for PSUs and Event-Based Triggers</em>. Because the Senate bill, like earlier versions of the House bill, relies only on service-based vesting conditions and excludes performance and event-based triggers, some equity awards could become taxable even before vesting. For example, performance-based restricted stock units would be taxable on grant unless, and only to the extent that, they include a service-based vesting component. Similarly, awards with vesting triggers based on exit events such as an initial public offering or change-in-control would be taxable on grant unless they require the recipient to be employed through the liquidity date.</li>
<br />
<li><em>Impact on Merger Consideration</em>. The accelerated taxation of equity would also place immense pressure on buyers, particularly in the private company context, to cash-out rather than assume equity awards in order to alleviate liquidity concerns for the equity holders and the company alike. Moreover, the proposed rules suggest that deferred or contingent merger proceeds payable to optionees and carve-out plan participants could be taxable at closing of the transaction, rather than upon receipt, absent provisions requiring continued employment through the payment date.</li>
<br />
<li><em>Grandfathering of Compensation Earned Prior to 2018</em>. If the Senate bill is enacted, the new deferred compensation rules would apply to compensation earned after December 31, 2017 (presumably, including currently unvested options), and generally allow existing deferred compensation arrangements to remain in place provided that they are paid before 2027.</li>
</ul>
<br />
<h3>Repeal of Deduction Exceptions for Performance-Based Compensation</h3>
<p>Currently, Section 162(m) of the Code limits the tax deduction public companies may take for compensation paid to certain executive officers in excess of $1 million. Both the proposed Senate and House bills will, among other changes, repeal exceptions to this limitation currently offered for qualified performance-based compensation, including non-qualified stock options. Although many companies currently structure their executive compensation to maximize applicable deductions for compensation expense, the value of such deductions and the corresponding impact of the repeal of Section 162(m) performance exceptions may be become less meaningful if corporate tax rates are reduced as anticipated.</p>
<p>The Senate Committee on Finance is scheduled to mark up the proposed bill on November 13, 2017. Fenwick &amp; West will continue to closely monitor any developments in the proposed legislation and encourages clients to reach out with questions.​​​​​</p>

<p>​​The recent decision in <a href="https://www.uspto.gov/sites/default/files/documents/general_plastic_industrial_co_ltd_v_canon_kabushiki_kaisha_ipr2016_01357_paper_19.pdf" target="_blank"><em><u>General Plastic Ind​ustrial Co. v. Canon Kabushiki Kaisha</u></em></a> denying the petitioner’s requests for a rehearing provided a “baseline” of factors to be considered as to the limited circumstances when second — or “follow-on” — petitions are likely to be successful in Patent Trial and Appeal Board trials.
</p>
<p>A recent decision denying the petitioner’s requests for a rehearing provided a “baseline” of factors to be considered as to the limited circumstances when second — or “follow-on” — petitions are likely to be successful in Patent Trial and Appeal Board trials.</p>
<p>The petitioner in <em>General Plastic</em> filed two <em>inter partes</em> review petitions, each challenging one patent. The PTAB denied institution on the merits. The petitioner then sought rehearing, which was denied. The petitioner filed further petitions several months later with newly discovered art, challenging the same two patents based in part on the new references.</p>
<p>The decision, rendered by an “expanded” panel including Chief Judge David P. Ruschke, is significant both procedurally — because the decision was rendered by an expanded panel — and substantively — because it provided greater clarity to all parties in an area of PTAB trials processes that had previously been somewhat inconsistent, and recently was designated “precedential,” a rare status indicating it is binding on future PTAB decisions unless replaced or undone.</p>
<p>To date, less than half of follow-on petitions have been instituted, showing the PTAB’s reservations about them. However, there was great disparity in the prior PTAB decisions on this topic, including whether all seven factors laid out in<em> </em><a href="http://www.ptabdigest.com/sites/default/files/ipr2016-00134%3b%20paper%209%3b%20discretionary%20institution.pdf" target="_blank"><em><u>NVIDIA v. Samsung Electronics</u></em><u> </u></a>were addressed. The varied outcomes led commentators and practitioners alike to wonder whether initiation of a given follow-on petition was dependent on the particular panel drawn by petitioner.</p>
<p>Thus, the decision to render the decision via an expanded panel and label the case as precedential likely represents a recognition of the inconsistency of the PTAB decisions in follow-on petitions, and stands as a statement that the analysis in the <em>General Plastic</em> decision should be followed by the PTAB on a going-forward basis.</p>
<p>Substantively, the decision by the expanded panel describes how multiple challenges to the same patent will be evaluated. It made clear that the seven <em>NVIDIA </em>factors — which the PTAB stated should, at minimum, serve as a baseline moving forward — likely will limit the number of challenges that a patent ultimately goes through, which could be encouraging for patent owners.</p>
<p>The seven<em> NVIDIA</em> factors are:</p>
<ol>
<li>The finite resources of the PTAB;</li>
<li>The requirement to issue a final determination not later than one year after institution;</li>
<li>Whether the same petitioner previously filed a petition directed to the same claims of the same patent;</li>
<li>Whether, at the time of the filing of the first petition, the petitioner knew or should have known of the prior art asserted in the later petition when it filed its earlier petition;</li>
<li>Whether, at the time of filing of the later petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the PTAB’s decision on whether to institute review in the earlier petition;</li>
<li>The length of time that elapsed between when the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; and</li>
<li>Whether the petitioner provides adequate explanation for the time elapsed between the filing of multiple petitions directed to the same claims of the same patent.</li>
</ol>
<p>The PTAB said, however, that “additional factors may arise” — essentially leaving open the door for panels to consider other factors outside the seven <em>NVIDIA</em> factors. In its decision denying the requests for rehearing, the Board noted that both 35 U.S.C. § 314(a) and § 325(d) made institution of review “discretionary.” Indeed, the discretionary nature of the institution decision might be the reason the PTAB opted to leave open a door for such “additional factors,” thereby allowing panels rendering future decisions to follow the guidance of <em>General Plastic</em> to the letter, while maintaining some discretion via possible additional factors not discussed in <em>General Plastic</em>.</p>
<p>However, the limits of the Board’s discretion is being called to question in <a href="http://www.scotusblog.com/wp-content/uploads/2017/08/16-969-ts.pdf" target="_blank"><em><u>SAS Institute v. Lee</u></em></a>, which the Supreme Court will hear this term, in which SAS argues that the USPTO cannot partially institute IPR proceedings, since <a href="https://www.gpo.gov/fdsys/pkg/USCODE-2014-title35/pdf/USCODE-2014-title35-partIII-chap31-sec318.pdf" target="_blank"><u>35 U.S.C. § 318(a)</u></a> says the PTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.” In the past, the Board has taken its interpretation of its discretion to an extreme, e.g., in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1116.Opinion.3-21-2016.1.PDF" target="_blank"><em><u>Shaw Industries Group v. Automated Creel Systems</u></em></a>, arguing that the statute only articulates the negative of when the trial <em>may not</em> be instituted, but that institution is never compelled. If SAS prevails, however, the decision could impose new limits on the Board's discretion.</p>
<p>While the Board stated that the <em>NVIDIA</em> factors would serve as a “baseline” going forward, a few factors in particular stood out in the <em>General Plastic</em> decision as holding more weight than others. Factor 1, “PTAB resources,” was articulated in the decision as: “the Board’s resources would be more fairly expended on initial petitions, rather than follow-on petitions.” If this is the way the PTAB is interpreting factor 1, it is likely to always weigh in favor of the patent owner, i.e., if the PTAB is favoring initial petitions over follow-on ones.</p>
<p>In addition, factors 5 and 7 seemed particularly important, as each addresses some aspect of the <em>timing</em> of the follow-on petition: whether a patent owner preliminary response and/or institution decision has been issued in the first petition, i.e., whether two and five months have elapsed, respectively, from the notice of a filing date (factor 5), and whether the petitioner has provided an adequate explanation of the time elapsed between petition filings (factor 7). Here, the second petitions were filed a few months after the institution decisions in the prior petitions and no adequate rationale was provided — so both of these weighed against the petitioner.</p>
<p>Factor 6 (time elapsed since knowledge of art in the second petition) seemed less important than did factor 4, as it was a relatively short timeframe that the art in the second petition actually was known to the petitioner, since it came from a prior art search performed after the institution decision in the first cases. However, there was no clear reason why the new art could not have been found/applied previously (i.e., it “should have” been known) — which weighed in the patent owner’s favor for factor 4.</p>
<p><strong>Takeaways and Implications</strong></p>
<p>On the whole, the decision provides patent owners some comfort that no true “second bite at the apple” — i.e., a new petition challenging the same claims of the same patent after the PTAB has issued an institution decision — is likely to be allowed unless truly changed circumstances justify the second petition (factor 5). Considering the seven factors, such attempted “second bites” of this type likely would mean at least four factors (factors 1, 3, 5 and 6) — and possibly more — weigh in favor of denying institution. The expanded panel in <em>General Plastic</em> echoed this sentiment in cautioning against using a first institution decision as a road map for follow-on petitions, noting that second petitions are not a time for modifying challenges to cure the board-identified deficiencies of the prior petition.</p>
<p>Many commentators have pointed out that patent owners should be pleased with the decision. Although the expanded panel indicated that “there is no per se rule precluding the filing of follow-on petitions” and that “there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted,” most read this language as followed by an implied “however”: e.g., however, the institution of follow-on petitions is reserved for exceptional circumstances.</p>
<p>For petitioners, the expanded panel decision provides some clarity when seeking to file follow-on petitions — specifically, as to how to bolster their chances of success in getting them instituted. In particular, petitioners should attempt to file any follow-on petition before the institution decision is rendered in the first petition, and before the patent owner preliminary response if possible. Furthermore, petitioners need to articulate a strong rationale justifying any delay in filing the second petition.</p>
<p>What the <em>General Plastic</em> decision makes clear is that petitioners seeking a true “second bite at the apple” — in which a petitioner tries to remedy the shortcomings of the earlier petition, especially those noted by the PTAB in the institution decision in the first petition — are almost certain to be unsuccessful. This aspect alone should provide some comfort to patent owners who face challenges to their patent via PTAB trials, who previously were uncertain as to what limits existed for such challenges. Although it might seem limiting to petitioners, the <em>General Plastic</em> decision does provide guidance that will help prevent petitioners wasting time, cost and resources filing second petitions when they are almost certain to be unsuccessful.</p>
<p>The upcoming <em>SAS</em> case may shed light on whether the Board has been applying the right amount of discretion to its institution decision, including the application of the seven <em>NVIDIA</em> factors in <em>General Plastic</em>. By asking the Supreme Court to interpret 35 U.S.C. § 318(a), the <em>SAS</em> case will require the justices to interpret the language of the America Invents Act to determine what level of discretion the Board may apply. It seems likely that the absolute discretion that the Board has argued is not the correct standard, especially without explanation of the underlying rationale, for precisely the reasons Judge Moore cautioned against during oral arguments in <em>Shaw</em>, when she likened the Board’s institution inconsistencies to throwing darts while blindfolded.</p>
<p>In particular, of the seven <em>NVIDIA</em> factors, the most problematic may be factor 1 (PTAB resources), since it seems to favor denial of institution without analysis beyond convenience for the PTAB. The one other AIA section noted by the Board that provides possible guidance as to second petitions is <a href="https://www.gpo.gov/fdsys/pkg/USCODE-2011-title35/pdf/USCODE-2011-title35-partIII-chap32-sec326.pdf" target="_blank"><u>35 U.S.C. § 325(d)</u></a>, which allows the Director to “reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” This statue seems related to <em>NVIDIA </em>factors 4, 6 and 7. It seems likely that the <em>SAS</em> decision may place some limits on the Board's institution discretion, including whether the <em>NVIDIA</em> factors will continue to serve as a “baseline” going forward.</p>
<p>The Board recently designated three decisions as informative, underscoring the difficulty of challenging patents using arguments that were previously rejected during patent prosecution. All three cases — <a href="https://www.uspto.gov/sites/default/files/documents/IPR2016-01571_Unified_Patents_v_Berman_Paper_10.pdf" target="_blank"><em><u>Unified Patents Inc. v. John L. Berman</u></em></a>, <a href="https://www.uspto.gov/sites/default/files/documents/IPR2017-00739_Hospira_v_Genentech_Paper_16_July_27_2017.pdf" target="_blank"><em><u>Hospira Inc. v. Genentech Inc.</u></em></a>, and <a href="https://www.uspto.gov/sites/default/files/documents/IPR2017-00777_Cultec_v_Stormtech_Paper_7.pdf" target="_blank"><em><u>Cultec Inc. v. StormTech LLC</u></em></a> — were denied institution on the holding that the art and/or the arguments were the same or similar to those previously presented to the USPTO.</p>
<p><em>Originally published in </em><a href="https://www.law360.com/articles/983186/a-rare-binding-ptab-decision-guidance-on-multiple-petitions" target="_blank"><em>Law360</em></a><em> on November 8, 2017 </em><em>(subscription required)</em><em>.</em>​​​​​​​​</p>

<p>Fenwick corporate lawyer Julia Forbess discussed biotech investment and financing trends with the <a href="https://www.youtube.com/watch?v=cy0tGE_lmGE" target="_blank">BIO Buzz Center</a> at the 2017 BIO Investor Forum.</p>
<p>“For 2018, we’re still expecting to see investment in core areas—oncology, orphan drugs and neurology. One thing that could be new is the number of tech investors interested in diagnostics and other tools,” she noted.</p>
<p>Forbess represents emerging technology companies in a variety of transactional matters with an emphasis on VC financings and exits through mergers, acquisitions and IPOs. She also represents public companies in secondary market financings and regulatory compliance.</p>
​​​​

Events

<p>In our data-driven and threat-filled world, companies — and thus their counsel — bear increased responsibilities to protect sensitive information and otherwise achieve technological competence. States' bars and bar associations as well as the judiciary keep sprinting to issue opinions to keep up with rapidly changing technologies. In this free webinar, Fenwick lawyer Robert Brownstone, the firm’s Electronic Information Management chair, will drill down on some of the key modern ethical obligations placed on lawyers both day-to-day and in litigation. Learn the do's and don'ts as to many &quot;hot topics,&quot; including: social media ethics concerns as to opposing parties, witnesses, jurors and judges; reasonable care obligations as to outsourced data storage and email transmissions; and increased eDiscovery competency expectations.​​​</p>

​​<p>This program will review the current state of the art and explore many of the copyright issues that 3D printing and scanning may implicate, including the useful article doctrine; the derivative work right; fair use; secondary liability; the anti-circumvention and safe harbor provisions of the Digital Millennium Copyright Act; and recent Supreme Court cases on design patent protection and the scope of copyright in 3D objects.</p>
<p>Join our esteemed panel as they:</p>
<ul>
<li>Explore the shift in production cycles across a wide range of material industries fueled by the advent of affordable, high quality 3D printing</li>
<li>Identify the legal hurdles associated with the new blurry line between application and expression, in a time when an average consumer can physically reproduce intellectual property they don't own the rights to</li>
<li>Summarize the state of the 3D printing industry with regards to various copyright laws and acts in place such as the Digital Millennium Copyright Act</li>
</ul>
​​​​​​​​

<p>Twenty years ago, the US Supreme Court’s decision in <em>Reno v. ACLU</em> established the framework for internet free speech and liability that remains in place today. This conference will consider the continuing viability of the Reno vision in the face of multiplying concerns about sex trafficking online, terrorist content, election interference, and other forms of contested content.</p>
<p>The conference will bring together key architects of the legislative, litigation and grassroots strategies that culminated in the <em>Reno v. ACLU </em>decision and those in industry, advocacy groups, and academia currently shaping internet policy. Topics will include the Reno vision of the internet; strategy for internet policy advocacy – then and now; and challenges to free expression online today. We will examine the international dimensions of internet free expression, the impact of changing business models, and the raging debate over corporate responsibility.</p>
<p>The goals of the conference are to provide a richer view of the advocacy that produced the<em> Reno v. ACLU</em> framework; to document continuing and unique challenges facing the internet today; to put the past and present in conversation about the future of the internet; and to identify opportunities for research, community building, and action to address today’s challenges.​</p>
<p>Fenwick's copyright litigation co-chair <b>Andrew Bridges</b> will participate in a panel discussion titled &quot;The Reno Legal Framework: Strengths and Limitations&quot;. See the <a href="https://www.law.berkeley.edu/research/bclt/upcoming-events/reno-20-internet-contested-content-now/" target="_blank">full agenda​</a>. ​</p>

​​​​<p>Fenwick &amp; West will be participating in the Berkeley-Stanford Advanced Patent Law Institute: Silicon Valley scheduled for December 14-15, 2017. Co-organized by BCLT and Stanford Law School, the APLI presents a roster of judges, academics, litigators, patent prosecutors and senior IP counsel from major corporations offering a results-oriented, in-depth look at the latest developm​ents in patent law and practice.​​​​</p>

​​<p>The Federal Circuit Bar Association will host a webcast on the role of patent local rules, including the Association's newly introduced Model Local Patent Rules. A panel of federal judges will discuss their experiences managing patent cases and their views on the role of local patent rules in facilitating the conduct and resolution of patent litigation.</p>
<p>Panelists: <strong>Honorable S. James Otero</strong>, US District Court Judge for the Central District of California; <strong>Honorable Christopher J. Burke</strong>, US Magistrate Judge for the District of Delaware; and <strong>Honorable Roy S. Payne</strong>
, US Magistrate Judge for the Eastern District of Texas​​</p>

​​<p>Fenwick &amp; West will be participating in the 4th Annual Corporate IP Strategy Conference (CIPSC) that will be held on November 16, 2017 at the Santa Clara University School of Law Locatelli Center in Santa Clara. Join us along with leading in-house IP counsel to discuss IP strategy and patent quality.​​​</p>

<p>Bloomberg Law's Big Law Business delivers business intelligence, drawn from its marketing-leading news and legal analysis, tailored for legal industry leaders at the 2nd annual Big Law Business Summit – West. </p>
<p>Unique in bringing together leaders of corporate legal departments and law firms, the summit connects the business of law with the business of Big Law clients.</p>
<ul>
<li>Big Law: The shifting state of the legal industry, including the push for talent, technology and top client service.</li>
<li>Business: The rulings, cases and long-term trends legal executives are watching.</li>
<li>West: Developments affecting the bottom line for technology-first companies, from cybersecurity to intellectual property.</li>
</ul>
<p>Exchange insights with industry leaders on the opportunities and challenges for business, and how legal counsel can best position themselves to advise their clients.</p>
​

​<p>Fenwick &amp; West is proud to be participating in PLI's Understanding the Intellectual Property License 2017 scheduled for December 6-7, 2017 at the PLI California Center in San Francisco. This introductory course will give you an overview of how to negotiate and draft effective license agreements, whether you are the licensor or licensee. Experts in licensing will discuss different kinds of licensing agreements, and the business and legal issues related to them.</p>
<p>What You Will Learn</p>
<ul>
<li>Negotiating tips and effective drafting techniques</li>
<li>Fundamentals of a copyright license</li>
<li>Important differences between patent and other technology licenses</li>
<li>Key provisions and practical considerations in trademark licensing</li>
<li>Understanding software and open source licenses</li>
<li>Rights of publicity and entertainment licensing</li>
<li>Protection and enforcement of rights internationally</li>
<li>Addressing antitrust issues</li>
<li>Treatment of IP licenses under bankruptcy law</li>
<li>How licensing can generate new revenue</li>
<li>Hear from a litigator what happens when the agreement has to be enforced</li>
</ul>
<p>Special Features</p>
<ul>
<li>Instructive mock negotiation of a license agreement</li>
<li>Earn one hour of Ethics credit</li>
</ul>
​​​​​​​​​​​

<p><strong>​​Why You Should Attend</strong></p>
<p>With the financial reporting world in a constant state of change, it’s challenging to keep up with new and evolving accounting standards, as well as regulations and policy shifts from the new administration. The Annual Forum will provide key insights and updates from regulators, industry and topic experts. Attendees will learn about FASB’s standard-setting agenda, as well as updates on rulemaking, interpretive guidance and enforcement actions from the SEC. Our expert faculty will discuss implementation challenges and offer practical approaches to new and complex disclosure and accounting requirements.</p>
<strong></strong><p><strong>What You Will Learn</strong>
</p>
<ul><li>Implementation of FASB’s revenue recognition standard is looming large in our rear view mirror, with last minute issues and lots of disclosure</li>
<li>Updates on rulemaking and interpretive guidance in the SEC’s Division of Corporation Finance, plus hot topi​cs in CorpFin’s comment process</li>
<li>Office of Chief Accountant frequent accounting consultation areas</li>
<li>Key accounting developments from the FASB: new accounting standards updates and updates in process</li>
<li>Shifting to leases implementation next year - implementation challenges</li>
<li>CECL and other financial instruments guidance and adoption issues </li>
<li>Key focus areas and hot topics throughout </li></ul>
<p><strong>Special feature:</strong></p>
<ul><li>Earn one full hour of CPE Behavioral Ethics credit</li></ul>
<p><strong>Who Should Attend</strong></p>
<p>SEC reporting professionals, including preparers of financial statements, partners of public accounting firms and their staff, lawyers and corporate legal staff, investor relations professionals, audit committee members, and others involved in preparation or review of financial statements.</p>
​​​​​​​​​

<p>The panel will address corporate social responsibility (CSR) issues and legal requirements in the financial services industry and the CSR programs implemented by financial institutions in response, with a focus on the recent efforts of financial institutions to combat human trafficking in the context of new payment technologies.​​</p>

​​<p>Gain insights on the collection, transfer and use of patient data and prepare for data breach recovery.</p>
<p>On October 30th, Fenwick's Litigation Of-Counsel Hanley Chew will be participating in a panel titled &quot;Playbook for Addressing a Data Breach&quot;.</p>
<p>Jim Koenig, Co-chair of Fenwick's Privacy and Cybersecurity group will be participating in a panel titled &quot;Tips to Quickly Address GDPR's Toughest Areas&quot;.​</p>

<p>Kickoff the Blockchain workshop with a Panel event to educate everyone on the fundamentals of Blockchain technology, platforms, use cases and token based business models. Business executives and professionals, software developers and Blockchain enthusiasts who are interested in learning about Blockchain technology should attend. Blockchain experts welcome as well!</p>
Learn
<ul>
<li>Learn about Blockchain platforms, building Smart contracts and Token-based business models from industry experts</li>
</ul>
​​​Pitch
<ul>
<li>Pitch your idea for a Blockchain startup concept</li>
<li>You will have 60 seconds to make a pitch</li>
<li>Vote to select the six best ideas</li>
</ul>
​​Team Up
<ul>
<li>Vote on which team you want to join</li>
<li>Meet your team members</li>
</ul>
​​​​​

<p>In addition to the live presentations in Dallas (November 2) and Houston (November 3), the Houston edition of the symposium will be available as a live webinar eligible for both CLE and CPE credit for those who can’t travel to Houston or Dallas. The event is co-sponsored by the University of Houston Law Center. </p>
<p>Our topics this year include the following:</p>
<ul>
<li>Tax Issues in U.S. Territories and Possessions</li>
<li>Expatriation</li>
<li>Washington Update</li>
<li>Tax Compliance Update</li>
<li>International Criminal Tax Issues</li>
<li>Cross-Border Pension Plans</li>
<li>Panel discussions with IRS representatives</li>
</ul>
<p>Fenwick tax partner Will Skinner will provide the Corporate International Tax Law Update. This session will focus on issues of recent importance in the U.S. federal international tax arena, including review and analysis of legislative, administrative, and judicial developments.</p>
​

​​<p>General Counsels of venture-backed startups face a unique set of challenges resulting from operating in a hypergrowth environment. Headcounts grow exponentially, regulatory gray areas and traps are prevalent, legal budgets are lean, media scrutiny can be intense and the pressure and stakes are high. </p>
<p>TechGC is bringing together startup and venture capital GCs from across the country for a full day of GC-to-GC learning and networking to share best practices and exchange ideas around these issues.</p>
<ul>
<li>Corporate Partner Kristine di Bacco is speaking on a panel titled: <i>Advancing Diversity in Startups and Venture Capital</i> </li>
<li> Corporate Partner Ian Goldstein is a roundtable lead for: <i>BioTech/Pharma/Life Sciences/Healthcare GC's</i></li>
<li>Fenwick's Chair of Electronic Information Management Robert Brownstone will be a roundtable lead for: <i>Implementing a Document Retention Program</i></li>
</ul>
​​​​

<p>​​Metadata, which exists in and around every electronic document, message, post and smartphone call, puts your firm and clients at risk for revealing sensitive, confidential or privileged information. Proper metadata and redaction procedures and tools can make all the difference in protecting against exposure. How can you avoid common mistakes involving .PDF conversions, track changes and electronic discovery? Join us for a live, 90-minute CLE webinar - chock full of real-time demos from the presenter's Desktop - in which you will discover:</p>
<ul>
<li>Keys to protecting outbound email attachments</li>
<li>What types of file system data and embedded data are most troublesome</li>
<li>Common risks for lawyers and clients: Security dangers in smartphone and tablet usage</li>
<li>Risk mitigation for .PDF conversions, Track Changes, electronic redactions and eDiscovery</li>
</ul>
​

News And Media

<p><strong>Mountain View, CA (December 13, 2017)</strong> – Fenwick &amp; West today released its Corporate Governance Survey for the 2017 proxy season, providing insight into the management, leadership and governance of technology and life sciences companies in Silicon Valley.</p>
<p>The survey covers more than a decade of governance trends, comparing companies in the S&amp;P 100 and their smaller and younger counterparts in the Silicon Valley 150 (SV 150), highlighting similarities and differences over time. Newly this year, the survey offers a look at various types of majority voting and features of stock ownership guidelines, as well as additional detail on the makeup of executive officers.</p>
<p>The latest survey shows that longtime trends in the S&amp;P 100 and SV 150 continued in the 2017 proxy season with a few exceptions, notably in the areas of dual-class stock structures and classified boards, where SV 150 companies are going their own way, in many cases to maximize protections against the vagaries of short-term market pressures—but also in board leadership where separation of chair and CEO roles is substantially more common.</p>
<p>Highlights of this year's key findings include the following:</p>
<p><strong>Dual-Class Voting Stock Structure</strong>
</p>
<ul>
<li>Adoption of dual-class voting stock structures has emerged as a recent clear trend among Silicon Valley technology companies—among the mid-to-larger SV 150 companies—though it is still a small percentage of companies.</li>
<li>Historically, dual-class voting stock structures have been significantly more common among S&amp;P 100 companies than among SV 150 companies, though the frequency in the SV 150 (11.3% in 2016 to 10.9% in 2017) has surpassed the S&amp;P 100 (9.0% in both 2016 and 2017) in recent years.</li></ul>
<p><strong>Classified Boards</strong></p>
<ul>
<li>Classified boards are now significantly more common among SV 150 companies than among S&amp;P 100 companies. Compared to the prior year, classified boards remained fairly consistent, holding steady at 6.7% for the top 15 companies in the SV 150 while the S&amp;P 100 has been at 4.0% since 2016.</li>
</ul>
<p><strong>Majority Voting</strong></p>
<ul>
<li>The rate of implementation of some form of majority voting has risen substantially over the period of this survey.</li>
<li>The increase has been particularly dramatic among S&amp;P 100 companies, rising from 10% to 97% between the 2004 and 2017 proxy seasons. Among SV 150 companies, the rate has risen from zero in the 2005 proxy season to 59.9% in the 2017 proxy season.</li>
</ul>
<p><strong>Stock Ownership Guidelines</strong></p>
<ul>
<li>The prevalence of stock ownership guidelines has generally increased over time in both groups but the SV 150 only recently surpassed the level of the S&amp;P 100. This year’s edition of the survey includes additional detail regarding the minimum holding amount and period requirements for executives and directors.</li>
</ul>
<p><strong>Board Diversity</strong></p>
<ul>
<li>2017 continued the long-term trend in the SV 150 of increasing numbers of women directors and declining numbers of boards without women members.</li>
<li>The rate of increase in women directors for SV 150 overall continues to be higher than among S&amp;P 100 companies. When measured as a percentage of the total number of directors, the top 15 of the SV 150 now slightly exceed their S&amp;P 100 peers (the top 15 averaged 25.4% women directors in the 2017 proxy season, compared to 23.9% in the S&amp;P 100).</li>
<li>Companies with at least one woman director went from 74% to 78.2% over the past year for the SV 150. Over a two-year period the percentage of companies with at least one woman director grew by 10 percentage points.</li>
</ul>
<p><strong>Executive Officers</strong></p>
<ul>
<li>The number of executive officers tends to be substantially lower among SV 150 companies than among the S&amp;P 100, and there continues to be a general decline in the average number of executive officers per company in both groups.</li>
<li>By contrast, the percentage of companies including General Counsel, Chief Legal Officer or a Chief Technology Officer or engineering executive as “executive officers” have been on a long-term upswing.</li>
</ul>
<p>Complete results of the survey with related discussion are available at <a href="http://fenwick.com/corporategovernance">Fenwick.com/CorporateGovernance</a>.</p>
<p><strong>About Fenwick &amp; West</strong><br /> Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies – at every stage of their lifecycle – and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, visit <a href="/pages/default.aspx">fenwick.com</a>.​​​​</p>

<p><em>Law360</em> <a href="https://www.law360.com/articles/993026/gilstrap-says-remote-workers-don-t-anchor-uniloc-ip-suit" target="_blank">reported</a> that Eastern District of Texas Judge Rodney Gilstrap dismissed a patent suit brought by Uniloc USA against Nutanix.</p>
<p>The judge ruled that 19 Nutanix employees who work remotely in the district do not give the company a place of business there.</p>
<p><em>Law360 </em>said that the judge found the Eastern District of Texas was not a proper venue for the software maintenance patent case because Nutanix—based in San Jose, California— does not have a “regular and established place of business” in the district as required by the U.S. Supreme Court’s <em>TC Heartland</em> ruling.</p>
<p>Judge Gilstrap relied on the Federal Ci​rcuit decision in <a href="/news/Pages/Cray-Scores-Significant-Patent-Venue-Win.aspx"><em>In re: Cray Inc</em></a><em>.</em>, outlining what constitutes a place of business, noted <em>Law360.</em></p>
<p>Nutanix is represented by Fenwick partners Charlene Morrow and David Hayes and associates Lauren Whittemore and Athul Achyara.</p>
<p>In <em>In Re: Cray Inc</em>., Cray is represented by Fenwick partners David Tellekson, Bryan Kohm and Melanie Mayer, and associates Jonathan McMichael, Yixin Zhang and Reilly Stoler.</p>
<p>The full article is available on <a href="https://www.law360.com/articles/993026/gilstrap-says-remote-workers-don-t-anchor-uniloc-ip-suit" target="_blank"><em>Law360</em> </a>(subscription required).​</p>

<p>Fenwick's Stephen Graham, co-chair of its life sciences practice and managing partner of the firm’s Seattle office, was profiled by <a href="https://www.bizjournals.com/seattle/news/2017/12/07/fenwick-west-stephen-graham-biotech-deals-lawyer.html" target="_blank">the<em> Puget</em> <em>Sound Business Journal</em>.</a></p>
<p>“Graham has had a hand in every major biotech merger and acquisition deal in the Puget Sound region over nearly 40 years representing companies in the industry,” the <em>Journal </em>reported.</p>
<p>When asked how he got into law, Graham said, “This may sound kind of funny, but I got into law because I wanted to help people... Focusing on the law put me in a position to help and it was an opportunity to be in a profession that was respected in the community.”</p>
<p>The key to a great deal? Graham emphasized “really understanding your company, your environment and your prospects and be realistic about it. And when the opportunity presents itself, know how to assess those opportunities.” </p>
<p>Graham’s practice concentrates in private and public mergers and acquisitions, public offerings, private placements, and corporate governance matters, including advising boards of directors and audit, compensation and nominating/corporate governance committees, preparation and filing of periodic SEC reports, and other securities law compliance. His diverse practice is focused on representing emerging and established high growth companies, essentially serving as an extension of the senior management teams and boards of directors. Graham also co-chaired the SEC’s Advisory Committee on Small and Emerging Companies for an unprecedented six years, his last term expiring last September.</p>
<p>Graham has been recognized by <em>Chambers USA</em> as one of the top corporate and M&amp;A lawyers in Washington. <em>The Washington Post</em> also named him &quot;one of the 19 most influential people in D.C. who can affect your small business&quot; for his role with the SEC.</p>
<p>The full profile is available through the <a href="https://www.bizjournals.com/seattle/news/2017/12/07/fenwick-west-stephen-graham-biotech-deals-lawyer.html" target="_blank"><em>Puget</em> <em>Sound Business Journal</em></a> (subscription required). Graham also discussed his career, diversity and inequality with the <em>Timmerman Report</em> on <a href="https://timmermanreport.com/2017/12/long-run-podcast-steve-graham-racism-corporate-america/" target="_blank">The Long Run Podcast</a>. He talked about some of the challenges he faced, advice for young people of color and how to create a more inclusive biotech industry.​​​</p>

<p>The U.S. Supreme Court will not hear a copyright case filed by Perfect 10 against Giganews, <a href="https://www.law360.com/articles/990925/high-court-won-t-hear-perfect-10-copyright-case" target="_blank"><em>Law360</em></a> reported.</p>
<p>This leaves in place a Ninth Circuit ruling that the service could not be held liable for infringing images by its user.</p>
<p>The Supreme Court denied a petition filed in August 2017 for a writ of certiorari that claimed the Ninth Circuit’s January ruling in favor of Giganews had “effectively immunized” the company’s &quot;staggering misappropriation of the creative efforts of others.”</p>
<p><em>Law360 </em>noted that the Ninth Circuit had originally reiterated precedent that web companies like Giganews can only be found directly liable for infringement if their own conduct actually causes the illegal activity to happen, something Perfect 10 had not proven.</p>
<p>Giganews is represented by Fenwick copyright litigation co-chair Andrew Bridges.</p>
<p>The full article is available through <a href="https://www.law360.com/articles/990925/high-court-won-t-hear-perfect-10-copyright-case" target="_blank"><em>Law360</em></a> (subscription required). Also reported by <em><a href="https://essential.bna.com/login/signin?msg=deny&amp;url=https://wsauth.bna.com/wsauth/blawauth?target%3Dhttps://www.bloomberglaw.com/product/blaw/document/X1EB6HU4000000?emc%3DBLAW%253A155319033%253A0%26resource_id%3D9dc28c8f26d12f37eaf65c63f277b226%26search32%3DxME80ohuFeCwov8GnHx9ow%253D%253DX1KoUWD67mStuTM7APDJttJNyZPyQALvyGRjtGe9N48wcw0qpEeVjMH3TZoudTJeReaYJByc_vIHOirfGc0cjA%253D%253D&amp;authenDec=-201" target="_blank">Bloomberg BNA</a></em> (subscription required).​​​</p>

<p>Fenwick securities enforcement co-chair Michael Dicke spoke with <a href="https://www.law.com/therecorder/sites/therecorder/2017/12/04/secs-new-cyber-unit-moves-to-tackle-scam-coin-offering/?back=law" target="_blank"><em>The</em><em> Recorder</em></a> about the first enforcement action of the U.S. Securities and Commission’s new Cyber Unit—a <a href="https://www.sec.gov/news/press-release/2017-219" target="_blank">court order</a> to freeze the assets of individuals behind an initial coin offering (“ICO”) that falsely promised a 13-fold profit in less than a month.</p>
<p>Filed in federal court in Brooklyn, New York, the SEC’s complaint alleges that a Quebec securities law violator and his company marketed and sold securities called PlexCoin in an ICO to investors in the U.S. and elsewhere. The coin offering had claimed the investments would yield a 1,354 percent profit in less than 29 days.</p>
<p>Formerly the head of enforcement for the SEC’s San Francisco regional office, Dicke told <em>The Recorder</em> that the SEC’s enforcement action was not surprising, given the commission’s messaging in recent months that it would aggressively pursue ICO frauds. He pointed out that it is unlikely to shed more light on how the SEC determines whether an ICO is a security.</p>
<p>“It’s clear out-and-out fraud that has the ICO component, so it fits in with what the SEC has been talking about in different speeches. The question is what [will the SEC do] if there’s not fraud, but there’s a registration violation. That’s unanswered,” Dicke noted.</p>
<p>The full article is available through <a href="https://www.law.com/therecorder/sites/therecorder/2017/12/04/secs-new-cyber-unit-moves-to-tackle-scam-coin-offering/?back=law" target="_blank"><em>The</em><em> Recorder </em>website</a> (subscription required).​​​​​</p>

<p>In 2017, the women of Fenwick &amp; West’s tax team were recognized as global, influential forces in tax law.</p>
<p>Partners Jennifer Fuller and Larissa Neumann and associates Julia Ushakova-Stein and Ora Grinberg were named among the best in their fields by their peers, clients and tax scholars alike.</p>
<p>“This has been an incredible year for the tax team, and I am excited to see so many of our top lawyers gaining recognition. Their efforts are absolutely core to our success,” Fenwick tax chair Adam Halpern said. “Their innovative counsel on multibillion-dollar deals and high-profile litigation wins is impressive, not to mention their excellent client service. We’re lucky to have these amazing women on our team.”</p>
<p>At Euromoney’s Women in Business Law Awards, <a href="https://fenwick.com/professionals/Pages/larissaneumann.aspx">Neumann</a> was named the <a href="/media/pages/fenwick-named-best-firm-for-women-in-business-law.aspx">top woman lawyer</a> for transfer pricing matters worldwide. She was also honored by <em>Silicon Valley Business Journal</em> on its list of <a href="/news/Pages/Larissa-Neumann-Named-to-Silicon-Valley-Business-Journal-2017-Women-of-Influence-List.aspx">Women of Influence</a>, which honors businesswomen having a major impact. In 2017, Neumann was also included in the following:</p>
<ul><li>Three of Euromoney’s Expert Guides: <em>World’s Leading Women Business Lawyers</em>, <em>World’s Leading Transfer Pricing Advisers</em> and <em>World’s Leading Tax Attorneys</em><br /></li>
<li><em>International Tax Review</em>’s list of the World’s Tax Controversy Leaders<br /></li>
<li><em>Daily Journal</em>’s <a href="/news/Pages/Fenwick-Partners-Named-Among-Californias-Top-Women-Lawyers.aspx">Top 100 Women Lawyers</a> of 2017<br /></li>
<li><em>The Legal 500</em> in both the International Tax and the Tax Contentious categories</li></ul>
<p><a href="/professionals/Pages/jenniferfuller.aspx">Fuller</a> was honored as one of the top 25 women tax lawyers in the world by Euromoney and was also shortlisted for the fourth time in the Best in Tax category at the Women in Business Law Awards. Euromoney has twice asked Fuller to write the introduction to its <em>Women in Business Law</em> guide. In 2017, she was included in the following:</p>
<ul><li>Two of Euromoney’s Expert Guides: <em>World’s Leading Women Business Lawyers </em>and <em>World’s Leading Tax Attorneys</em><br /></li>
<li><em>International Tax Review</em>’s lists of both the World’s Women in Tax Leaders and World’s Tax Controversy Leaders<br /></li>
<li><em>The Legal 500</em> in the Tax Contentious category</li></ul>
<p>At Euromoney’s Women in Business Law Awards, <a href="/professionals/Pages/juliaushakovastein.aspx">Ushakova-Stein</a> won the Tax Rising Star award and was also recognized alongside <a href="/professionals/Pages/oragrinberg.aspx">Grinberg</a> among only nine Rising Stars in Euromoney’s <em>World’s Leading Tax Attorney</em>s. Ushakova-Stein also appears in <em>International Tax Review</em>’s Women in Tax Leaders guide.​</p>

<p>Fenwick litigation partner and gaming and digital media practice chair Jennifer Kelly talked to <a href="https://www.law.com/sites/almstaff/2017/11/30/snooze-button-aside-how-jennifer-kelly-manages-kids-and-career/?back=law" target="_blank"><em>Law.com</em></a> about a typical workday and balancing career and family life.</p>
<p>Kelly said her biggest time-saver is to “try very hard to be focused and be super, super efficient. The problem is that I am very friendly with so many of my colleagues that I end up laughing more than I planned to everyday, but it ends up making the workplace feel very fun.”</p>
<p>One of the foremost authorities on IP issues pertinent to video games and mobile apps, Kelly has been named one of <a href="http://www.therecorder.com/id=1202799186959"><em>The Recorder</em>’s Women Leaders in Tech Law</a> for the past two years and was recently named to the <a href="/news/Pages/Fenwicks-Jennifer-Kelly-Named-to-TechLaw-Executive-Board.aspx">Executive Board of TechLaw</a>. She is the first woman to hold a leadership position in TechLaw’s 30-plus year history.</p>
<p>The full article is available on the <a href="https://www.law.com/sites/almstaff/2017/11/30/snooze-button-aside-how-jennifer-kelly-manages-kids-and-career/?back=law" target="_blank"><em>Law.com</em></a> website (subscription required).​​​</p>

<p>Fenwick privacy and cybersecurity counsel Hanley Chew spoke to <a href="http://thehill.com/business-a-lobbying/362458-feds-find-some-foreign-hackers-are-out-of-reach" target="_blank"><em>The Hill</em></a> about the challenges that federal officials are facing in prosecuting foreign hackers who target U.S. businesses.</p>
<p>Chew talked about two recent cases that underscore the difficulty of prosecuting cyber criminals and state-sponsored hackers, though they were successfully indicted in both cases.</p>
<p>He noted that law enforcement officials have faced an uphill battle, given the difficulty of attributing attacks and gathering enough evidence for successful prosecutions. This is even more difficult when the hackers cross national boundaries and officials have to rely on other countries to obtain the necessary information to investigate and prosecute crimes.</p>
<p>Chew explained, “These indictments are more to make a political statement to China, Iran and other countries which either protect or sponsor hackers. It’s both a warning to the individual hacker and, to the extent that the hacker is state-sponsored, also to the country, that says that we take these matters very seriously.”</p>
<p>“This is definitely a growing problem both domestically and internationally. As more and more personal data is being stored online … there are likely to be more unauthorized intrusions as the targets become more tempting and the potential rewards for this activity becomes much greater,” Chew told <em>The Hill</em>.</p>
<p>The full article is available on <a href="http://thehill.com/business-a-lobbying/362458-feds-find-some-foreign-hackers-are-out-of-reach"><em>The Hill</em> website​</a>.​​</p>

<p>Fenwick litigation partner Charlene Morrow talked to <a href="https://www.law360.com/articles/986669/5-things-to-watch-as-high-court-tackles-aia-reviews" target="_blank"><em>Law360</em></a> about U.S. Supreme Court case <em>Oil States Energy Services LLC v. Greene's Energy Group LLC</em>, discussing how the case may abolish the AIA’s inter partes review system.</p>
<p>In oral arguments, the Court will consider if the Patent Trial and Appeal Board has the constitutional authority to find patents invalid.</p>
<p>Morrow explained to <em>Law360</em> that such a decision could shift the balance of power to patent owners by making patents more expensive to invalidate, while also creating new issues to consider, such as whether other processes for challenging patents are also unconstitutional.</p>
<p>Morrow mentioned she was surprised the justices agreed to hear the <em>Oil States</em> case, &quot;given that re-examinations have been around for so long, and there were prior opportunities for the court to take up re-examinations, but they didn't do it.&quot;</p>
<p>&quot;It will be interesting to hear the perspective of the court on the history of our system… if the court disrupts the system here, it could disrupt other areas of administrative law,&quot; Morrow noted.</p>
<p>The full article is available through <a href="https://www.law360.com/articles/986669/5-things-to-watch-as-high-court-tackles-aia-reviews" target="_blank">the<em> Law360</em> website</a> (subscription required).​​</p>

<p>Fenwick privacy lawyer Hanley Chew talked to <em><a href="https://www.bloomberg.com/news/articles/2017-11-21/mobile-phone-case-at-supreme-court-to-test-privacy-protections" target="_blank">Bloomberg</a></em> about U.S. Supreme Court case <em>Carpenter v. United States </em>and how the case may limit law enforcement officials’ power to track persons using mobile phone data.</p>
<p>In oral arguments, the Court will consider requiring prosecutors to secure a warrant before obtaining mobile-phone records showing a person’s location over a period of time.</p>
<p>Chew pointed out a key consideration in the case is how much deference the Court should give the Stored Communications Act. He mentioned a ruling holding government officials to a higher standard could be especially important in cases involving narcotics and firearms — which commonly rely on location data.</p>
<p>It’s going to require law enforcement to do more investigating before they go to court for cell-site information. As a result of that, it might slow down some investigations,” Chew told <em>Bloomberg</em>.</p>
<p>The full article is available through <a href="https://www.bloomberg.com/news/articles/2017-11-21/mobile-phone-case-at-supreme-court-to-test-privacy-protections" target="_blank">the <em>Bloomberg</em> website</a>. Chew also discussed the case in <a href="https://www.law360.com/articles/987883" target="_blank">this <em>Law360</em> article​</a> (subscription required).</p>

<p><strong>Mountain View, CA (November 20, 2017)</strong> — Fenwick &amp; West announced today that Idan Netser has joined the firm as a tax partner. Netser joins Fenwick’s highly recognized tax group which numerous organizations rank as one of the top international tax and corporate practices.</p>
<p>Netser’s practice focuses on all areas of corporate taxation. He counsels clients on U.S.-international corporate and partnership taxation, transfer pricing, foreign tax credits, tax planning and restructuring, international joint ventures and M&amp;A transactions, and tax controversy. Netser also serves as primary outside counsel to numerous tech startups, connecting them with corporate attorneys and providing overall guidance on the legal issues central to their business. </p>
<p>“We are delighted to have Idan return to Fenwick as part of the tax team,” said Adam Halpern, chair of Fenwick’s tax group. “Idan is known for his strategic guidance and practical tax advice, which make him a great fit. That, along with his collaborative approach to client service in partnership with our corporate and other lawyers, will be a true benefit for clients.”</p>
<p>“Idan’s experience with both startup clients in Silicon Valley and Israel in particular is impressive, and his relationship with the Israeli founder community as well as venture investors will enhance our strong startup and VC practice,” said Cindy Hess, co-chair of Fenwick’s startup and venture capital practice. “Many of his clients are early-stage, venture-backed technology and life sciences startups that can leverage our assistance on corporate and financing matters.”</p>
<p>Netser, who served as a Fenwick tax associate earlier in his career, pointed to the caliber of Fenwick’s tax and corporate practices and strong technology focus as major reasons he chose to return to the firm.</p>
<p>“I’m thrilled to rejoin Fenwick and looking forward to help grow our top-tier tax and corporate practices. Fenwick’s key advantages include a dedication to strong technical lawyering, serious commitment to client service, an unrelenting deep technology focus and a broad Israel practice that focuses on serving technology and life sciences companies. It’s a great match for my rapidly growing practice.”</p>
<p>Named to the <em>Daily Journal</em>’s Top 40 under 40 for 2017 and recognized as a <em>Northern California Super Lawyers </em>Rising Star for the previous four years, Netser received his LL.M. in International Taxation from University of Michigan Law School. He also earned his LL.B. and B.A. in Economics from Tel Aviv University. Netser will be based in Fenwick’s Silicon Valley office.</p>
<p>Fenwick’s tax group has represented six of the Fortune Top 10 companies, well over 50 of the Fortune 100 largest U.S. companies, and over 100 of the Fortune 500 largest U.S. companies in U.S. federal tax and tax controversy matters.</p>
<p>Fenwick’s tax practice has been named the <a href="https://fenwick.com/Media/Pages/Fenwick-Honored-as-the-Leading-Silicon-Valley-and-San-Francisco-Tax-Firm.aspx">San Francisco and Silicon Valley Tax Firm of the Year</a> nine times in the past 12 years by <em>International Tax Review</em>. In 2017, the publication also named Fenwick the U.S. Tax Court Firm of the Year, the firm’s fourth national tax litigation award. <em>Chambers Global</em>, <em>Chambers USA </em>and <em>The Legal 500</em> also rank Fenwick among the United States’ best tax practices, with The Legal 500 notably honoring Fenwick for international, contentious and non-contentious tax work.​</p>
<p><strong>About Fenwick &amp; West</strong><br /> Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies – at every stage of their lifecycle – and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, visit <a href="/pages/default.aspx">fenwick.com</a>.​​​</p>

<p><a href="https://www.law.com/therecorder/sites/therecorder/2017/11/08/malwarebytes-deals-blow-to-enigma-suit-with-section-230-win/" target="_blank"><em>The Recorder</em></a> reported that U.S. District Judge Edward Davila granted Malwarebytes’ motion to dismiss a lawsuit filed against it by Enigma Software Group USA under a rarely litigated provision of Section 230.</p>
<p>Judge Davila ruled Malwarebytes cannot be held liable for its decision to filter Enigma Software Group’s anti-malware products as “potentially unwanted programs.”</p>
<p>The court reaffirmed that internet security software companies have immunity under Communications Decency Act Section 230(c)(2)(B), exercising their discretion in deciding what material is “objectionable” and will be filtered by the software they provide to users.</p>
<p>According to <em>The Recorder, </em>Judge Davila affirmed that there is no “good faith” requirement to CDA Section 230(c)(2)(B) immunity, as courts do not need to examine whether a provider of the technical means to filter objectionable material acted in good faith.</p>
<p>Malwarebytes is represented by Fenwick’s Tyler Newby, Guinevere Jobson, and Sapna Mehta.</p>
<p>The full article is available <a href="https://www.law.com/therecorder/sites/therecorder/2017/11/08/malwarebytes-deals-blow-to-enigma-suit-with-section-230-win/" target="_blank">through <em>The Recorder</em> website​</a> (subscription required).​​​</p>

<p>Fenwick litigation partner and gaming and digital media practice chair Jennifer Kelly talked to <a href="https://www.law.com/therecorder/sites/therecorder/2017/11/07/fenwick-partner-elected-as-techlaws-first-female-president/?back=law" target="_blank"><em>The Recorder</em></a> about <a href="/News/Pages/Fenwicks-Jennifer-Kelly-Named-to-TechLaw-Executive-Board.aspx">her election to the Executive Board of TechLaw</a>.</p>
<p>Honored as one of <a href="http://www.therecorder.com/id=1202799186959" target="_blank"><em>The Recorder</em>’s Women Leaders in Technology Law</a> for the past two years, Kelly told the publication that as an executive board member, she “would like to encourage more female participation in TechLaw and think about how to promote female leadership within our own law firms.”</p>
<p>She noted that TechLaw is “a really trusted network of people” where she has formed deep relationships with other law firm representatives. “I know that… if I refer a matter to another TechLaw firm, they’re going to do a great job and take good care of my client.”</p>
<p>Kelly said one of the issues she’ll be looking at as a member of TechLaw’s executive board is “the new technologies that we can be using as law firms to help increase our efficiency in the practice of law.”</p>
<p>She will begin serving as TechLaw treasurer in 2018 and progress to the role of president in 2021. She is the first woman to hold a leadership position in TechLaw’s 30-plus year history.</p>
<p>The full article is available on <a href="https://www.law.com/therecorder/sites/therecorder/2017/11/07/fenwick-partner-elected-as-techlaws-first-female-president/?back=law" target="_blank"><em>The Recorder</em> website</a> (subscription required).​​​​</p>

<p><strong>Mountain View, CA (November 7, 2017)</strong> – For the third year in a row, Fenwick &amp; West has been named Technology Law Firm of the Year by Global M&amp;A Network.</p>
<p>Fenwick also earned four deal of the year awards, including the Technology M&amp;A Deal of the Year and the Cross Border Deal of the Year in the Americas Middle Markets category, as well as the Asia Pacific Deal of the Year and the Global Consumer Deal of the Year in the Global Major Markets category.</p>
<p>“These awards are a terrific testament to the breadth and depth of our M&amp;A team,” Fenwick M&amp;A group co-chair Doug Cogen said. “Not only did we again win Tech M&amp;A Law Firm of the Year, but each of the four deals that were recognized with awards this year were led by a different Fenwick M&amp;A partner—Ken Myers (Appirio), Greg Roussel (Supercell), Lynda Twomey (Cisco) and Kris Withrow (Jet.com).”</p>
<p>As the firm did last year, Fenwick recei​ved the Technology M&amp;A Deal of the Year award, this year for serving as legal advisor to <a href="/experience/Pages/Fenwick-Represents-Cisco-in-its-$610-Million-Acquisition-of-Viptela.aspx" target="_blank">Cisco in its $610 million acquisition of Viptela</a>, a privately held software-defined wide area network (SD-WAN) company based in San Jose. Fenwick was also awarded with the large Cross Border M&amp;A Deal of the year for representation of <a href="/experience/Pages/Fenwick-Represents-Appirio-in-its-$500-Million-Acquisition-by-Wipro.aspx">Appirio in its $500 million acquisition by Wipro</a>, which will create one of the world’s largest cloud transformation practices.</p>
<p>The firm also received the Asia Pacific Deal of the Year award for the firm’s representation of Supercell Oy, a Finland-based developer of mobile games, in its <a href="/experience/Pages/Fenwick-Represents-Supercell-Oy-in-its-$8.6B-Majority-Stake-Acquisition-by-Tencent.aspx">$8.6 billion majority stake acquisition by Tencent Holdings Limited</a>, one of China’s largest and most used Internet portals. And Fenwick earned the Global Consumer Deal of the Year for representing <a href="/experience/Pages/Fenwick-Represents-Jet.com-in-its-$3-Billion-Acquisition-by-Walmart.aspx">Jet.com in its $3 billion acquisition by Walmart</a>, the largest U.S. e-commerce acquisition ever.</p>
<p><strong>About Fenwick &amp; West</strong><br />Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies—at every stage of their lifecycle—and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, please visit <a href="/pages/default.aspx">fenwick.com​</a>.</p>
​​​

<p>Fenwick intellectual property lawyer Jennifer Bush spoke to <a href="https://www.law360.com/articles/979318/new-informative-ptab-rulings-could-help-defeat-aia-reviews" target="_blank"><em>Law360</em></a> about how three decisions designated as “informative” by the Patent Trial and Appeal Board highlight the difficulty of challenging patents using arguments considered when the patent was examined, and could help patent owners in getting <em>inter partes</em> review petitions denied.</p>
<p>In all three decisions that the PTAB flagged as providing guidance for litigants, the board refused to institute review of a patent because the same or similar invalidity arguments were looked at and rejected during prosecution of the patent. In terming the decisions as “informative,” the PTAB indicated it will be looking at whether America Invents Act review petitions recycle arguments, and that highlighting these similarities can help patent owners defeat challenges.</p>
<p>Bush told <em>Law360</em> that what this means for practitioners is that “if you’re using the same art, you really need to distinguish it from the arguments made during prosecution o​r present some new evidence. Otherwise, you can expect it will be denied.”</p>
<p>Bush noted that the PTAB's rejection of petitions for using arguments previously considered by examiners appears to be a fairly recent development. The board was previously seen as being more open to considering such arguments, but an influx of petitions and criticism that IPRs are unfair to patent owners may have caused the board to think twice, she said.</p>
<p>“In the early days of IPRs, I feel like this wasn’t an issue. Everyone thought it was fair game on art that was addressed in prosecution,” Bush said.</p>
<p>The full article is available on the <a href="https://www.law360.com/articles/979318/new-informative-ptab-rulings-could-help-defeat-aia-reviews" target="_blank"><em>Law360</em></a> website (subscription required).​​​</p>

<p>Fenwick patent litigation partners David Tellekson, Bryan Kohm and Melanie Mayer, along with associate Reilly Stoler, summarized to <a href="http://ipkitten.blogspot.com/2017/10/us-patent-litigation-on-move-again.html" target="_blank"><em>The IPKat</em></a> how the Federal Circuit provided patent venue guidance in its precedential opinion in <em>In re Cray Inc</em>.</p>
<p>The lawyers noted that “A key takeaway for employers is that the typical work-from-home employee will not create a ‘regular and established place of business’ for venue purposes. In rejecting the position that such home offices are sufficient, the Federal Circuit explicitly stated that a “home in which [defendant’s employee] carries on some work that he does for the defendant” does not meet the standard.</p>
<p>“More broadly, the decision will likely shift much of U.S. patent litigation out of the Eastern District of Texas. While many companies, such as national retailers will remain subject to venue in the Eastern District, many, if not most, of U.S. corporations will not.&quot;</p>
<p>Tellekson, Kohm and Mayer, with associates Jonathan McMichael, Yixin Zhang, Eman Sojoodi and Reilly Stoler, represented petitioner Cray Inc. in this matter. ​​​​​</p>
<p>The full article is available through <a href="http://ipkitten.blogspot.com/2017/10/us-patent-litigation-on-move-again.html" target="_blank"><em>The IPKat</em> website</a>.​​​​​​​​​​</p>

<p>Fenwick litigation partner and gaming and digital media practice chair Jennifer Kelly was named to the Executive Board of TechLaw. She will begin serving as TechLaw treasurer in 2018 and progress to the role of president in 2021. Kelly is the first woman to hold a leadership position in TechLaw’s 30-plus year history.</p>
<p>Recently elected chair of Fenwick’s intellectual property and commercial litigation practice group, Kelly focuses her practice on litigation and counseling, with a particular emphasis on copyright, trademark, right of publicity, trade secret and false advertising disputes for technology companies, and particularly companies in the gaming industry.</p>
<p>One of the foremost authorities on IP issues pertinent to video games and mobile apps, Kelly has been named one of <a href="http://www.therecorder.com/id=1202799186959" target="_blank"><em>The Recorder</em>’s Women Leaders in Tech Law</a> for the past two years and has been recognized as one of the <a href="/Media/Pages/Kate-Fritz-and-Jennifer-Kelly-Named-Among-San-Francisco-Influential-Women-in-Business.aspx">Most Influential Women in the Bay Area</a> by the <em>San Francisco</em> <em>Business Times </em>and one of California’s <a href="/Media/Pages/Five-Fenwick-Partners-Named-among-Californias-Best-Intellectual-Property-Attorneys.aspx">Top Intellectual Property Attorneys</a> and <a href="/Media/Pages/Gaming-Litigation-Partner-Jennifer-Kelly-Named-Top-California-Entertainment-Lawyer.aspx">Top Entertainment Lawyers</a> by <em>The Daily Journal</em>.</p>
<p>Fenwick is a longtime member of the TechLaw Group, a network of technology-focused law firms. Formed in 1986 by five U.S. law firms, it has grown to include 25 law firms with more than 8,400 lawyers and offices in more than 35 countries. The organization’s mission is for member firms to serve as resources for each other. </p>
<p>For more information, visit the <a href="http://techlaw.org/" target="_blank">TechLaw website</a>.​​​​​​​​</p>

<p><a href="https://www.law360.com/articles/973294/fed-circ-upholds-order-nixing-caller-id-patent-under-alice" target="_blank"><em>Law360</em></a> reported that the U.S. Court of Appeals for the Federal Circuit upheld a lower court decision finding a patent related to reverse lookup of caller ID information—which Fenwick client Whitepages had been accused of infringing—was patent-ineligible and invalid under the U.S. Supreme Court's <em>Alice</em> standard.</p>
<p>The court affirmed a California federal judge's 2016 ruling that the patent was invalid because it was directed to the abstract idea of &quot;looking up a name associated with a phone number,” according to <em>Law360.</em></p>
<p>The cases are <em>Whitepages Inc. v. Jeffrey Isaacs et al.</em> and <em>Greenlight Venture Corp. v. True Software Scandinavia AB</em> before the appeals court.</p>
<p>Whitepages is represented by Fenwick patent litigation partner Bryan Kohm and associates Ravi Ranganath and Liz Hagan.</p>
<p>The full article is available through the <a href="https://www.law360.com/articles/973294/fed-circ-upholds-order-nixing-caller-id-patent-under-alice" target="_blank"><em>Law360 </em>website</a> (subscription required).​​​</p>

​​<p><strong>Mountain View, CA (October 30, 2017)</strong> – Fenwick &amp; West today announced that securities enforcement co-chair and litigation partner Michael Dicke has been named to <em>Securities Docket</em>’s “Enforcement 40,” a list of the 40 leading securities enforcement defense attorneys in the country. </p>
<p>Dicke is the only San Francisco and Silicon Valley-based lawyer—and one of only three on the West Coast—to be recognized.</p>
<p>According to the <em>Securities Docket</em> publication, the Enforcement 40 recognizes “the 40 best and brightest securities enforcement defense l​awyers in the business,” and are the “defensive specialists critical to have on speed-dial should the SEC’s Division of Enforcement come calling.” The honor is based on nominations, input from numerous senior lawyers in the field and independent research.</p>
<p>Prior to joining Fenwick, Dicke spent over 15 years with the SEC, most recently serving as the associate regional director for enforcement in the SEC’s San Francisco regional office, where he supervised all of the office’s investigations and litigation.</p>
<p>Dicke also is recognized for expertise in regulatory enforcement and securities litigation in the <em>Best Lawyers</em> 2018 guide and the 2017 <em>Legal 500 </em>guide. He currently serves as co-chair of the American Bar Association’s Securities Enforcement subcommittee.</p>
<p>Dicke and the other honorees were announced on October 26, 2017, in Washington, D.C. at the Securities Enforcement Forum 2017. See the complete <a href="http://www.securitiesdocket.com/enforcement-40-for-2017/" target="_blank">“Enforcement 40” list​</a>.</p>
<p><strong>About Fenwick &amp; West</strong><br /> Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies—at every stage of their lifecycle—and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, please visit <a href="/pages/default.aspx">fenwick.com</a>.​</p>

<p><strong>Mountain View, CA (October 30, 2017)</strong> – Fenwick &amp; West today released a report covering the <a href="/FenwickDocuments/Fenwick_Proxy_2017.pdf">Results of the 2017 Proxy Season in Silicon Valley</a>.</p>
<p>The report summarizes significant developments relating to stockholder voting at annual meetings in the 2017 proxy season among the technology and life sciences companies included in the Silicon Valley 150 Index (SV 150). Newly this year, the report compares voting developments in the SV 150 to those of the large public companies included in the Standard &amp; Poor’s 100 Index (S&amp;P 100) as trends typical in the S&amp;P 100 often migrate to Silicon Valley. Additionally, the report contains SV 150 trend information using data from the past three years. The constituents of the S&amp;P 100 Index are determined by S&amp;P/Dow Jones Indices and the constituents of the SV 150 are determined by <em>The Mercury News</em>.</p>
<p>Highlighting statistics that underscore developments in director elections, “say-on-pay” and a range of other compensation, governance and policy matters, this report is a companion supplement to the Fenwick survey, <em>Corporate Governance Practices and Trends: A Comparison of Large Public Companies and Silicon Valley Companies</em> (to be published in the fourth quarter of 2017).</p>
<p>In the 2017 proxy season, 138 of the SV 150 companies and all 100 of the S&amp;P 100 companies held annual meetings that typically included voting for the election of directors, ratifying the selection of auditors of the company’s financial statements and voting on executive officer compensation (“say-on-pay”). </p>
<p>Annual meetings also increasingly include voting on one or more of a variety of proposals that may have been put forth by the company’s board of directors or by a stockholder that has met the requirements of the company’s bylaws and applicable federal securities regulations.</p>
<p>This report provides results for matters commonly voted on at annual meetings, as well as voting breakdowns and results in other major subject categories.</p>
<p><strong><u>Significant Findings</u></strong></p>
<p>Among the key findings are:</p>
<p><strong>Annual Meeting Participation</strong></p>
<ul>
<li>An average of approximately 89% of shares of SV 150 companies was represented in person or by proxy at company annual meetings during the 2017 proxy season, similar to 2016. However, in addition to the approximately 11% not represented, an additional 12% were represented via proxy by brokers who did not receive instructions on voting for the bulk of matters for which broker discretionary voting is not permitted. This compares to 13% not represented and 14% broker non-votes in the S&amp;P 100 in the same period.</li>
<li>The ranges of representation and voting, though, were somewhat broader in the SV 150 than the S&amp;P 100 (e.g., 50.3% – 98.9% voting in the SV 150, compared to 70% – 94% voting in the S&amp;P 100).</li>
</ul>
<p><strong>Director Elections</strong></p>
<ul>
<li>The average percentage of support for company nominees was essentially unchanged in the last three years. The S&amp;P 100 average support was approximately 3% higher than their peers in the top 15 companies of the SV 150.</li>
<li>The average size of the board slate up for election among the SV 150 was 5.4 directors, compared to 11.6 directors among the S&amp;P 100, with the difference driven by both smaller boards and the relative prevalence of staggered boards in the SV 150. The most common number of directors being elected was two directors in the SV 150, with the number ranging from one to 14 (compared to a range of four to 18 directors among the S&amp;P 100, with 11 most common). </li>
<li>In the vast majority of cases, the elections of directors continue to be uncontested. Unlike 2016, when there were no contested elections in the SV 150 (and none in the S&amp;P 100), one of the SV 150 companies and one of the S&amp;P 100 companies had a contested election at its annual meeting in the 2017 proxy season. Cypress Semiconductor’s board slate competed with a slate of two candidates, both of which were ultimately elected (Cypress entered into an 11th hour settlement and two directors resigned when the outcome of the voting was clear). General Motors handily defeated a competing slate of three candidates.</li>
</ul>
<p><strong>Say-on-Pay</strong></p>
<ul>
<li>Of the 115 companies in the SV 150 that held say-on-pay votes at their annual meetings (98 in the S&amp;P 100), only two companies in the SV 150 lost the vote (compared to two in the S&amp;P 100). In the SV 150, there had been six such failed votes in 2016 and five in 2015.</li>
<li>There was a greater average level of opposition in the S&amp;P 100, as say-on-pay opposition reached 15% or more of votes cast (ignoring abstentions and broker non-votes) at 21% of SV 150 companies (compared to 19% of S&amp;P 100 companies). Within the SV 150, opposition reached 30% or more at seven companies (of which six had opposition of 40% or more, including three companies where opposition exceeded 50%). In the SV 150, 12 companies had opposition of 30% or more in 2016, and 10 companies had such say-on-pay opposition in 2015.</li>
<li>Most companies recommended annual frequency for say-on-pay voting, which was approved by stockholders. In the rare instances where triennial frequency was recommended, it was also generally approved (three of three in the SV 150 and two of three in the S&amp;P 100).</li>
</ul>
<p><strong>Other Proposals Voted On</strong></p>
<ul>
<li>Generally, stockholders at larger companies continue to be asked to vote on more matters than at smaller companies. Stockholders voted on 635 matters at 100 annual meetings of S&amp;P 100 companies, compared to 592 matters at the 138 annual meetings held by SV 150 companies. Excluding the director elections, say‑on‑pay (and say-on-frequency) and auditor approval, S&amp;P 100 stockholders were asked to vote on 255 proposals, while SV 150 company stockholders voted on 137 proposals.</li>
<li>The increased number of proposals in the S&amp;P 100 was a function of the fact that stockholder proposals are mainly a large company phenomenon (only four stockholder-sponsored proposals were voted on by stockholders outside of the top 50 companies in the SV 150 companies), as well as the fact that larger companies are significantly more likely to hold say‑on‑pay votes annually.</li>
</ul>
<p><strong>Company Proposals</strong></p>
<ul>
<li>In both SV 150 and S&amp;P 100 companies, company-sponsored proposals are significantly more likely to be passed than those sponsored by stockholders. </li>
<li>In the SV 150, company proposals were mostly compensation-related (primarily equity plan approvals) (87%); governance (12%); and other (1%). This is compared to the S&amp;P 100, where compensation-related proposals (primarily equity plan approvals also) were 78% governance‑related were 16% and other proposals were 6%.</li>
<li>Excluding the director elections, say-on-pay (and say on frequency) and auditor approval voting, stockholders at SV 150 companies voted on 95 company-sponsored proposals, primarily on compensation-related subjects, as well as some governance matters (compared to 50 such proposals at S&amp;P 100 companies).</li>
</ul>
<p><strong>Shareholder Proposals</strong></p>
<ul>
<li>There were many more stockholder-sponsored proposals in the S&amp;P 100 compared to the SV 150. S&amp;P 100 company stockholders were asked to vote on 205 stockholder-sponsored proposals at annual meetings (compared to 42 such proposals voted on by stockholders of SV 150 companies). Within the SV 150, more than three quarters of stockholder-sponsored proposals were voted on at the top 15 companies. </li>
<li>SV 150 stockholder proposals were evenly split between governance- and policy-related topics, with no policy-related proposals being passed and only five of 20 governance proposals passed. In comparison, S&amp;P 100 policy-related proposals comprised 56% of stockholder proposals—where the three proposals of 115 policy-related that passed were environment/sustainability topics—and 34% governance‑related topics (of which, only three of 70 passed).</li>
<li>The SV 150 had two stockholder proposals to eliminate dual-class stock structure voting, both of which failed, while the S&amp;P 100 had four such stockholder proposals that also failed.</li>
<li>SV 150 stockholder proposals in 2017, however, saw a shift toward policy issues and fewer governance topics compared to 2016. The most common topics for stockholder-sponsored proposals in the SV 150 in 2017 were political/lobbying activities and proxy access (six proposals and four, respectively, none of which were successful), while the most common topic in the S&amp;P 100 related to political/lobbying activities, environmental/sustainability and independent chair (39, 29 and 21 proposals, respectively, only three of which succeeded, all environmental/sustainability topics).</li>
<li>In the SV 150, there was an increase in political/lobbying activities proposals (from two to six over the past three years), and Israel/Palestine/Holy Land (from one to three over the last three years), plus an emergence of charitable contributions, along with a decline in environmental/sustainability and human rights and animal testing/welfare.</li>
</ul>
<p>Complete results of this report with related discussion are posted on Fenwick’s <a href="/FenwickDocuments/Fenwick_Proxy_2017.pdf">website</a>.</p>
<p><strong>About Fenwick &amp; West</strong></p>
<p>Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies—at every stage of their lifecycle—and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, please visit <a href="/pages/default.aspx">fenwick.com</a>.​​</p>

​​<p><strong>Mountain View, CA (October 27, 2017)</strong> – Fenwick &amp; West today announced the election of three lawyers to the partnership, effective January 1, 2018.
</p>
<p>The new equity partners are Scott Behar, Sheeva Ghassemi-Vanni and Faisal Rashid. Corporate lawyers Behar and Rashid are based in San Francisco, while employment lawyer Ghassemi-Vanni is based in Mountain View.</p>
<p>“Our new partners are not only accomplished practitioners, they are also inspiring leaders and mentors at Fenwick and in the larger community,” Fenwick chair Richard Dickson said. “Their commitment to our clients and our firm positions us for continued success as we serve some of the world’s most innovative companies.” </p>
<p><a href="/professionals/Pages/scottbehar.aspx">Scott Behar</a> represents public and private companies in connection with a variety of U.S. and cross-border transactions, including mergers, investments, stock and asset acquisitions and divestitures, particularly in the technology space. He received his J.D. from Harvard Law School and B.A. from University of Pennsylvania, and is a member of the State Bars of California and New York.</p>
<p><a href="/professionals/Pages/sheevaghassemivanni.aspx">Sheeva Ghassemi-Vanni</a> advises startups, private companies and established public companies on a variety of labor and employment issues including non-competition and employee mobility; hiring, performance management, and termination; leaves of absence and accommodation; harassment, discrimination, and retaliation; and wage and hour matters. She also represents clients in litigation related to these areas. In addition, Sheeva advises companies regarding labor and employment issues arising in mergers and acquisitions. She was named to <a href="/Media/Pages/Two-Fenwick-Lawyers-Honored-as-Silicon-Valley-Business-Journals-40-Under-40.aspx"><em>Silicon Valley Business Journal</em>’s 40 Under 40</a> list of standout professionals in 2016. Sheeva earned her J.D. from Santa Clara University School of Law and B.A. from San Jose State University, and is a member of the State Bar of California.</p>
<p><a href="/professionals/Pages/faisalrashid.aspx">Faisal Rashid</a> provides strategic counseling to early, mid and late-stage private companies across a variety of sectors, advising his clients on day-to-day corporate matters as well assisting clients in negotiating and managing financing transactions, mergers and acquisitions and other strategic transactions. He also provides ongoing advice to his clients on general corporate compliance, SEC reporting and governance issues. Faisal received his J.D. from Yale Law School and B.A. from Stanford University, and is a member of the State Bar of California.</p>
<p><strong>About Fenwick &amp; West</strong><br /> Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies—at every stage of their lifecycle—and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, please visit <a href="/pages/default.aspx">fenwick.com</a>.​​​​​​​</p>

​​<p><strong>Mountain View, CA (October 26, 2017)</strong> – Fenwick &amp; West today released a first look at results of its <a href="/publications/Pages/silicon-valley-venture-capital-survey-third-quarter-2017.aspx">Third Quarter 2017 Silicon Valley Venture Capital Survey</a>, which analyzed the terms of 183 venture financings that closed in the third quarter of 2017 by companies headquartered in Silicon Valley.</p>
<p>Valuation results substantially increased in Q3 2017 following the modest increases seen in Q1 and Q2 2017. While series B, C and D rounds in Q3 enjoyed larger average valuation increases compared to the prior quarter, later stage Series E+ rounds were up only 19% in Q3 compared to a far greater average increase of 55% in Q2. The life sciences industry notably recorded the strongest valuation results in Q3 2017, in contrast to Q2 when its valuation metrics lagged behind other industries.</p>
<p>“VC investment activity in Silicon Valley improved significantly the past quarter, and valuation metrics are the highest since mid-2015,” said Cindy Hess, co-chair of Fenwick’s startup and venture capital practice and co-author of the survey. “It’s not clear whether the enthusiasm demonstrated among private investors will translate into the investor enthusiasm needed to open public markets, but it does show investors are willing to invest in specific industries, such as Life Sciences.”</p>
<p>“The average price increase for later stage Series E+ rounds was 19% in Q3 2017, which was significantly lower than the prior two quarters,” said Mark Leahy, co-chair of Fenwick’s startup and venture capital practice and co-author of the survey. “Nonetheless, later stage companies have been able to raise significant capital from private markets at high valuations, which have pushed out their exit timelines.”</p>
<p><strong>Valuations Well Above Historical Averages</strong></p>
<p>Overall, valuation metrics are well above their historical averages, although still off from the highs recorded in mid-2015.</p>
<p>Up rounds exceeded down rounds 79% to 10%, with 11% flat. This was an increase from Q2 2017, when up rounds exceeded down rounds 77% to 13%, with 10% flat. This was the highest percentage of up rounds and the lowest percentage of down rounds since Q1 2016.</p>
<p>An up round is one in which the price per share at which a company sells its stock has increased since its prior financing round. Conversely, a down round is one in which the price per share has declined since a company’s prior financing round.</p>
<p><strong>Valuation Results Up but Less So for Late-Stage Companies</strong></p>
<p>The Fenwick &amp; West Venture Capital Barometer™ showed an average price increase in Q3 2017 of 80%, an increase from 64% recorded in Q2 and the highest average price increase recorded since Q3 2015. </p>
<p>Series B, C and D rounds all recorded stronger valuation results compared to the prior quarter while the average price increase for Series E+ rounds declined considerably from 55% in Q2 to 19% in Q3.</p>
<p><strong>Life Sciences Scores Strongest Valuation Results</strong></p>
<p>In contrast to the prior quarter when its valuation metrics lagged those of the other industries, the life sciences industry recorded the strongest valuation results in Q3 2017. </p>
<p>The hardware and software industries also recorded strong valuation metrics in Q3, although the valuation results for the software industry were modestly weaker than the elevated results recorded by the industry in the prior quarter. </p>
<p>The internet/digital media industry recorded a lower average price increase compared to the prior quarter; however, the median price increase was significantly higher.</p>
<p>Our “First Look” report covering top line trends for venture capital financings of Silicon Valley companies in Q3 is available on Fenwick &amp; West’s <a href="/publications/Pages/silicon-valley-venture-capital-survey-third-quarter-2017.aspx">website</a>. This initial report will be followed in several weeks with a more in-depth “Full Analysis” that will provide a broader perspective and include coverage of venture capital financings in other geographies drawing on data from a variety of industry reports.</p>
<p><strong>About the Survey</strong><br /> The Fenwick &amp; West Venture Capital Survey has been published quarterly for more than 15 years and offers a unique view of the venture capital market in Silicon Valley by providing insight into changes in valuations and terms. Focusing on trends in venture financing and valuations, this Fenwick &amp; West survey complements the economic data presented by Dow Jones VentureSource, PWC/CB Insights MoneyTree™ Report and PitchBook-NVCA Venture Monitor.</p>
<p><strong>About Fenwick &amp; West</strong><br /> Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies—at every stage of their lifecycle—and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, please visit <a href="/pages/default.aspx">fenwick.com</a>.​​</p>

<p><strong>Mountain View, CA (October 20, 2017)</strong> – Fenwick &amp; West is pleased to announce that Fenwick-sponsored Equal Justice Works Fellow <a href="https://onejustice.org/staff/renee-schomp/" target="_blank">Renée Schomp​</a> has completed her two-year fellowship.</p>
<p>Based at nonprofit OneJustice, Schomp developed Rural Immigrant Connect, a project connecting California’s rural immigrants in dire need of legal services with pro bono lawyers in urban areas through in-person meetings and virtual technology communication.</p>
<p>“Fenwick provided me with a tremendous opportunity to use my legal degree to make a difference in the lives of a community who otherwise may not have had access to legal services,” Schomp said. “It was so gratifying to see the program come to life and make an impact—and to have Fenwick’s support along the way.”</p>
<p>California is home to more than 10 million immigrants, the largest such population in the nation. About 2.6 million of California’s immigrants are undocumented. Many immigrant communities, particularly those in rural areas, have little access to affordable legal services.</p>
<p>Rural Immigrant Connect has made significant headway in bridging this access to justice gap. Working with Schomp, Rural Immigrant Connect and other organizations, a Fenwick team <a href="/Media/Pages/Fenwick-Secures-Political-Asylum-for-Client-Facing-Persecution-in-Guatemala.aspx">was able to secure asylum</a> for a minor fleeing violence in Guatemala. The Fenwick team has collaborated with Rural Immigrant Connect on several other immigration cases.</p>
<p>“I have admired Fenwick’s willingness to try this pilot project,” Schomp said. “Taking on a full-scope immigration case pro bono represents a huge investment of time, and it has been inspiring to see attorneys eager to make that commitment.&quot;</p>
<p>Schomp’s project primarily focused on California’s Central Valley, which has a critical need for nonprofit and pro bono lawyers. Following the initial presidential executive order to ban immigrants from seven Muslim countries, her work later expanded to include Northern California. As part of OneJustice’s mission to partner with other legal services organizations, Schomp collaborated with Social Justice Collaborative and Centro Legal de la Raza to build scalable pro bono programs to serve vulnerable communities in need of immigration advocacy.</p>
<p>During her fellowship, Schomp also helped design and lead an emergency pop-up legal clinic at San Francisco International Airport in response to the travel ban and developed cross-agency pro bono networks to increase the capacity of legal services organizations to leverage pro bono resources on behalf of underserved communities. In total, during her two years as an Equal Justice Works Fellow, Schomp collaborated to provide 296 individuals with assistance on immigration cases.</p>
<p>Prior to her fellowship, Schomp spent two years at OneJustice leading the Justice Bus Project in Northern California, which offers free one-day legal clinics to military veterans, immigrants, seniors and low income families throughout rural and isolated California communities. Now that her fellowship is concluded, Schomp will continue her work as a fulltime Senior Staff Attorney at OneJustice, facilitating the growth of cross-agency pro bono networks and expanding the Rural Immigrant Connect model to further increase representation of rural low-income clients.</p>
<p>“Renée’s passion for leveraging technology and creative strategies to bring much-needed legal services to a broader community in need is inspiring,” Fenwick managing partner Kate Fritz said. “For over a decade, Fenwick has been privileged to support outstanding Equal Justice Works fellows like Renée, helping them to pursue what may be lifelong careers in public service.”</p>
<p>&quot;Fenwick's generous sponsorship of Renée's fellowship allowed OneJustice and the greater legal services community to move forward with designing new ways to continue to bridge the urban-rural inequity in legal services resources by both testing the use of virtual legal services and by crowd-sourcing teams of pro bono attorneys to take on full-term immigration cases,” Julia Wilson, CEO at OneJustice, said. “We are so grateful to Fenwick for its ongoing support of OneJustice, and we are delighted that Renée has chosen to stay with us as a Senior Staff Attorney in order to focus on replicating and scaling the many lessons learned during her fellowship.”</p>
<p>Schomp received one of Equal Justice Works’ 2015 fellowships, which the nonprofit awards to highly competent lawyers who have designed creative legal initiatives to address issues in communities that are not adequately represented in the legal system. With support from sponsors like Fenwick, the fellows receive competitive salaries and other benefits over two years. Other Fenwick fellows have served a variety of populations from veterans to low-income workers.</p>
<p>Fenwick’s pro bono program includes civil rights, child advocacy and asylum work, as well as impact litigation. In the past three years, Fenwick lawyers have logged over 50,000 pro bono hours valued at over $20 million in fees. Last year alone, the firm donated more than 19,000 hours valued at more than $9 million.</p>
<p><strong>About Fenwick &amp; West</strong><br /> Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies—at every stage of their lifecycle—and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, please visit <a href="/pages/default.aspx">fenwick.com</a>.​​​</p>

<p>Fenwick partners <a href="http://resources.npm.com/interviewees/sam-angus/" target="_blank">Sam Angus</a>, <a href="http://resources.npm.com/interviewees/kristine-di-bacco/" target="_blank">Kristine Di Bacco</a> and <a href="http://resources.npm.com/interviewees/william-skinner/" target="_blank">Will Skinner</a> talked to <a href="http://resources.npm.com/" target="_blank">Nasdaq Private Market</a> about significant topics related to private issuers, including primary capital raising, equity compensation and secondary liquidity.</p>
<p>Corporate partner Angus, who advises startup and venture-backed companies in seed, VC and debt financings, M&amp;A, IP licensing, joint ventures and general corporate matters, discussed the various stages of <a href="http://resources.npm.com/private-company-capital-raising-investor-expectations-3/" target="_blank">private company primary investing</a> and factors to consider at the seed investment stage. He covered the <a href="http://resources.npm.com/private-company-capital-raising-late-stage-investing/">late stage</a> of primary company investing and the <a href="http://resources.npm.com/private-company-capital-raising-corporate-investment-stage/" target="_blank">corporate investment</a> stage of private company primary investing, among other topics (including ICOs).</p>
<p>Corporate partner Di Bacco, who represents emerging technology companies primarily in the consumer internet, e-commerce, FinTech, digital health, consumer hardware and software sectors, provided an <a href="http://resources.npm.com/equity-compensation-rule-701/" target="_blank">overview of Rule 701</a>, an exemption that allows private companies to issue equity to their employees. She also reviewed the <a href="http://resources.npm.com/equity-compensation-rule-701-sec-guidance-on-disclosure-requirements/" target="_blank">SEC’s recent guidance</a> on Rule 701’s disclosure requirements and outlined the <a href="http://resources.npm.com/equity-compensation-rule-701-disclosure-requirements/" target="_blank">disclosure requirements</a> a private company must satisfy when relying on Rule 701 to issue stock to employees.</p>
<p>Tax partner Skinner, who practices in the areas of corporate and international taxation, discussed tax considerations and the types of companies that <a href="http://resources.npm.com/tax-considerations-qsbs-rules-the-types-of-companies-that-qualify/" target="_blank">qualify under the Qualified Small Business Stock (QSBS) rules</a>. He also discussed the <a href="http://resources.npm.com/tax-considerations-qsbs-rule-considerations-related-to-secondary-and-exit-transactions/" target="_blank">applicability of the QSBS</a> in the context of secondary transactions and M&amp;A events and provided an overview of <a href="http://resources.npm.com/tax-considerations-overview-of-qualified-small-business-stock/" target="_blank">qualified small business stock</a> and associated tax considerations.</p>
<p>Angus, Di Bacco and Skinner’s insight and analysis can be found on the <a href="http://resources.npm.com/" target="_blank">Nasdaq Private Market Resource Center.</a>​​​​</p>

<p>Fenwick managing partner Kate Fritz was recognized by the National Diversity Council as <a href="http://top50lawyers.org/" target="_blank">one of their Top 50 Women Lawyers for 2017</a>.</p>
<p>“The 2017 Top 50 Women Lawyers award list highlights the most extraordinary female leaders in the legal field,” said Dennis Kennedy, founder and chairman of the NDC. “These women are the most prominent leaders, and they have reached the top of their profession by being effective leaders in their organization. They drive change, innovate, and inspire others to succeed while contributing to business growth.”</p>
<p>As Fenwick’s managing partner, Fritz has devoted significant efforts to advancing women and driving the firm’s continued dedication to pro bono work and community impact.</p>
<p>Under her leadership, Fenwick partnered with Diversity Lab to pilot the <a href="/news/Pages/Mansfield-Rule-Eyes-a-Big-Law-Diversity-Breakthrough.aspx">Mansfield Rule</a>. Under this regulation, 30% of candidates for leadership and governance positions must be women and minorities. Fenwick continues its commitment to work/life balance and providing opportunities, rather than barriers, for women to succeed. The firm offers a flexible, reduced-hour schedule available to all from associates to partners, along with other benefits such as backup childcare.</p>
<p>Fenwick also sponsors and partners with several other outside organizations to provide career development opportunities and support for Fenwick women lawyers and women in the community. For example, under Fritz’s leadership, the firm participates in the <a href="/Media/Pages/Fenwick-Welcomes-First-OnRamp-Fellow.aspx">OnRamp Fellowship</a>, a leading-edge program that provides women lawyers re-entering the legal profession with an opportunity to update their skills and legal contacts through one-year, paid positions with top law firms.</p>
<p>The firm also regularly sponsors women lawyers—and men—passionate about public service careers through Equal Justice Works Fellowships. Partnering with firm or corporate sponsors, the nonprofit awards these fellowships to highly competent lawyers who have designed creative legal initiatives to address issues in at-risk communities. Two of Fenwick’s most recent fellows tackled issues directly impacting the well-being and success of women, serving victims of domestic violence and <a href="/Media/Pages/Fenwick-Fellow-Brings-Equal-Education-Access-to-Pregnant-and-Parenting-Students.aspx">pregnant and parenting students</a>. </p>
<p>Fenwick has also launched a <a href="/Media/Pages/Fenwick-Drives-Greater-Community-Impact-with-New-Corporate-Social-Responsibility-Program.aspx">new corporate social responsibility program</a> dedicated to greater community impact.</p>
<p>In addition to her invaluable diversity and pro bono work, Fritz is a top intellectual property litigator and has provided strategic guidance to leading technology, media, and internet companies for over 23 years.</p>
<p>The National Diversity Council is a nonprofit organization that supports a nationwide network of councils to advance diversity and inclusion in the work place and community. Each year, the NDC honors 50 women who go above and beyond to uphold the values of this organization, serve as an effective role model for other women and demonstrate a commitment to corporate citizenship. </p>
<p>For more information about the awards, please visit the <a href="http://top50lawyers.org/" target="_blank">National Diversity Council website</a>.​​​​​</p>

<p>Fenwick trademark partner Karen Webb was named one of <a href="http://www.therecorder.com/id=1202799186959" target="_blank"><em>The Recorder</em>’s Women Leaders in Tech Law</a> for 2017.</p>
<p>Webb counsels established and startup companies on brand strategy and the protection of brand assets, including, brand creation, selection, protection, expansion and enforcement. She has extensive experience in the social media and internet space, both advising platforms in trademark matters and helping brand owners navigate social media.</p>
<p>Asked how she felt about the prospects for women in the tech industry after the events that rocked Silicon Valley this year, she told <em>The Recorder</em>, “More hopeful. By bringing these issues to light and encouraging discussion, we'll be able to discover and take continued steps toward propelling women to greater heights in the tech industry.”</p>
<p>Webb was also honored by the <a href="/news/Pages/Fenwick’s-Karen-Webb-Honored-Among-Silicon-Valley-Business-Journal-40-Under-40.aspx"><em>Silicon Valley Business Journal</em></a> as a top 40 leader under age 40 in Silicon Valley for 2017. This year, she is one of <a href="/Media/Pages/Fenwick-Partners-Recognized-as-Women-Leaders-in-Technology-Law.aspx">five Fenwick partners honored as a woman leader in tech law by <em>The Recorder</em></a>, the most honorees from any organization being recognized.</p>
<p>Webb’s full profile is available through <a href="http://www.therecorder.com/id=1202798992811" target="_blank"><em>The Recorder </em>website</a> (subscription required).</p>
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<p>Fenwick corporate partner Dawn Belt was named one of <a href="http://www.therecorder.com/id=1202799186959" target="_blank"><em>The Recorder</em>’s Women Leaders in Tech Law</a> for 2017.</p>
<p><em>The Recorder</em> noted that Belt helped represent data storage provider Nimble Storage in its $1.2 billion acquisition by Hewlett Packard Enterprise.</p>
<p>Asked whether lawyers bear any special responsibility in addressing gender stereotyping and discrimination in tech, she told <em>The Recorder</em>, “I think all leaders have the responsibility to be self-aware, set a good example and be open-minded about identifying talent.”</p>
<p>Belt advises technology companies on a broad range of general corporate and complex transactional matters, including startup counseling, venture capital financings, mergers and acquisitions, public offerings, SEC compliance and corporate governance.</p>
<p>Belt was also named to <em>Silicon Valley Business Journal</em>’s 2017 <a href="/Media/Pages/Dawn-Belt-and-Larissa-Neumann-Honored-as-Silicon-Valley-Business-Journal-2017-Women-of-Influence.aspx">Women of Influence</a> list, which honors Silicon Valley's 100 most influential women. She is one of <a href="/Media/Pages/Fenwick-Partners-Recognized-as-Women-Leaders-in-Technology-Law.aspx" target="_blank">five Fenwick partners honored by <em>The Recorder</em></a> this year, the most honorees from any organization being recognized.</p>
<p>Belt’s full profile is available through <a href="http://www.therecorder.com/id=1202799001281" target="_blank"><em>The Recorder</em> website</a> (subscription required).</p>
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<p>Fenwick intellectual property partner Antonia Sequeira was named one of <a href="http://www.therecorder.com/id=1202799186959" target="_blank"><em>The Recorder</em>’s Women Leaders in Tech Law</a> for 2017.</p>
<p><em>The Recorder </em>noted that Sequeira led a Fenwick team that filed patents for the latest Facebook and Instagram app features, and for the Oculus Rift VR headset.</p>
<p>Asked who’s been the best leader she’s seen in action, she told <em>The Recorder</em>, “I can't pick a single best leader, but I can say that I'm constantly impressed by the strong women that surround me in my profession, from those leading the companies I represent to my colleagues at my firm. They constantly (and gracefully) overcome challenges associated with being female leaders in tech while still taking the time to mentor and motivate those around them.”</p>
<p>Sequeira concentrates on patent prosecution, counseling, analysis and litigation. Her technology focus includes medical and biotechnology device, digital health/health IT, laboratory automation, bioscience, biopharmaceutical, genomics, proteomics, genomic diagnostics, clean technology, social networking, computer security, electronic commerce, VR/AR, and other software and internet technologies.</p>
<p>Sequeira was also named to the <em>Daily Journal</em>’s <a href="/news/Pages/Fenwick-Partners-Named-Among-Californias-Top-Women-Lawyers.aspx">2017 Top 100 Women Lawyers</a> list, which honors the most outstanding women lawyers in California. She is one of <a href="/Media/Pages/Fenwick-Partners-Recognized-as-Women-Leaders-in-Technology-Law.aspx" target="_blank">five Fenwick partners honored by <em>The Recorder</em></a> this year, the most honorees from any organization being recognized.</p>
<p>Sequeira’s full profile is available through <a href="http://www.therecorder.com/id=1202799001281" target="_blank"><em>The Recorder </em>website</a> (subscription required).</p>

<p>Fenwick securities litigation partner Catherine Kevane was named one of <a href="http://www.therecorder.com/id=1202799186959" target="_blank"><em>The Recorder</em>’s Women Leaders in Tech Law</a> for 2017.</p>
<p><em>The Recorder </em>noted that Kevane secured two early victories for GoPro in securities suits over the past year, one on demurrer in San Mateo state court and another in the Northern District of California dismissed after a single motion to dismiss.</p>
<p>Asked whether lawyers bear any special responsibility in addressing gender stereotyping and discrimination in tech, she told <em>The Recorder</em>, “As people we all have a responsibility to pursue equality and fairness. This isn't limited to lawyers and it is not limited to tech. But as lawyers we do have additional responsibilities and opportunities to counter bias and discrimination. That starts with yourself and your firm. I've been fortunate enough to also work with clients who take the initiative on gender equality and expect the same of their counsel,” Kevane added.</p>
<p>Kevane focuses her practice on representing and counseling technology companies and their directors, audit committees, and officers in securities class actions, internal investigations and before government agencies in matters involving the Foreign Corrupt Practices Act, accounting violations, securities violations and whistleblower claims.</p>
<p>She is one of <a href="/Media/Pages/Fenwick-Partners-Recognized-as-Women-Leaders-in-Technology-Law.aspx">five Fenwick partners honored by<em> The Recorder</em></a>, the most honorees from any organization being recognized.</p>
<p>Kevane’s full profile is available through <a href="http://www.therecorder.com/id=1202798782653?slreturn=20170904151410" target="_blank"><em>The Recorder</em> website</a> (subscription required).</p>
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<p>For the second consecutive year, Fenwick litigation partner and gaming and digital media practice chair Jennifer Kelly was named one of <a href="http://www.therecorder.com/id=1202799186959" target="_blank"><em>The Recorder</em>’s Women Leaders in Tech Law</a>.</p>
<p><em>The Recorder</em> noted that Kelly—one of the foremost authorities on intellectual property issues pertinent to video games and mobile apps—obtained a settlement in which toy maker Hasbro agreed to take down its mobile game &quot;My Little Pony: Puzzle Party,&quot; which she argued illegally &quot;cloned&quot; her client Peak Games' &quot;Toy Blast&quot; game.</p>
<p>Asked for one piece of advice she would give young lawyers in tech, she told <em>The Recorder</em>, “Don't wait for opportunities to present themselves. Get out there and grab them for yourself.”</p>
<p>Kelly focuses her practice on commercial and intellectual property litigation and counseling, with a particular emphasis on copyright, trademark, right of publicity, trade secret and false advertising disputes for technology companies, and particularly companies in the gaming industry.</p>
<p>Kelly is one of <a href="/Media/Pages/Fenwick-Partners-Recognized-as-Women-Leaders-in-Technology-Law.aspx" target="_blank">five Fenwick partners honored by <em>The Recorder</em></a>, the most honorees from any organization being recognized.</p>
<p>Kelly’s full profile is available through <a href="http://www.therecorder.com/id=1202798695471" target="_blank"><em>The Recorder</em> website (subscription required)​</a>.</p>
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<p><strong>Mountain View, CA (October 4, 2017) </strong>– Fenwick &amp; West is pleased to announce that startup partner Michael Esquivel has been named among the top 100 lawyers in California by the <em>Daily Journal</em>.</p>
<p>The legal publication’s annual Top 100 list honors lawyers doing cutting-edge legal work.</p>
<p>A partner in Fenwick’s corporate group and co-chair of the firm’s digital health practice, Esquivel provides strategic counseling to both emerging and high-growth companies, handling all aspects of general corporate and corporate securities law. He also represents venture capitalists and investment banks that are fueling innovation, not only in the digital health sector, but also in the internet, social networking, IT and cleantech industries.</p>
<p>“I’m humbled by this recognition,” Esquivel said. “It’s truly an honor to work with such amazing clients, colleagues and friends.”</p>
<p>The<em> Journal </em>highlighted some of Esquivel’s noteworthy work over the past year, including representing <a href="/experience/Pages/Fenwick-Represents-Omada-Health-in-$50-Million-Financing.aspx">Omada Health</a>, a pioneer in digital health coaching that helps users prevent or better manage chronic diseases such as Type 2 diabetes, in a $50 million financing led by Cigna. The publication also pointed to his work on several financings for <a href="/experience/Pages/Fenwick-Represents-Tile-in-$25-Million-Series-B-1-Financing.aspx">Tile</a>, the “smart location” company whose Bluetooth devices help consumers find their keys and other possessions.</p>
<p>Esquivel is also often called on to help lead deal teams for major M&amp;A transactions. This past year, he helped steer the firm's corporate team in its representation of AppLovin, a mobile app startup in the advertising tech space, in its $1.4 billion sale to Orient Hontai Capital.</p>
<p>In addition to leaders in digital health like Omada and other hot startups like Tile and AppLovin, Esquivel’s client list includes leading companies and venture capital firms such as Andreessen Horowitz, Augmedix, Boxed, DFJ, Everlane, Facebook, Green Chef, GoPro, Propeller Health, Rock Health, Sageview Capital, Science Exchange and Sequoia Capital.</p>
<p>The <em>Journal</em> notes Esquivel’s passion for working with cutting-edge companies that are changing industries and improving lives. He seeks to anticipate his clients’ unique business and legal needs not just for today or tomorrow, but over a company’s entire lifecycle.</p>
<p><strong>About Fenwick &amp; West</strong><br />Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies—at every stage of their lifecycle—and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, please visit <a href="/pages/default.aspx">fenwick.com​</a>.​</p>

<p>October 3, 2017</p>
<p><em>The Recorder</em> honored five Fenwick lawyers on its <a href="http://www.therecorder.com/id=1202793896184" target="_blank">2017 Women Leaders in Tech Law</a> list, recognizing their outstanding work with technology companies and issues. Fenwick partners have consistently appeared on the list, and this year, more women from Fenwick were recognized than from any other organization.</p>
<p>“These lawyers handled deals that are reshaping the industry, cases that are setting new precedent, and navigated what can best be called a murky regulatory environment,” <em>The Recorder</em> reported.</p>
<p>Fenwick’s 2017 honorees include corporate partner <a href="http://www.therecorder.com/id=1202799001281" target="_blank">Dawn Belt</a>, litigation partners <a href="http://www.therecorder.com/id=1202798695471" target="_blank">Jennifer Kelly</a> and <a href="http://www.therecorder.com/id=1202798782653" target="_blank">Catherine Kevane</a>, and intellectual property partners <a href="http://www.therecorder.com/id=1202798782732" target="_blank">Antonia Sequeira</a> and <a href="http://www.therecorder.com/id=1202798992811" target="_blank">Karen Webb</a>.</p>
<p><em>The Recorder </em><a href="http://www.therecorder.com/id=1202799186959/Meet-Our-2017-Women-Leaders-in-Tech-Law" target="_blank">featured</a> the Fenwick lawyers this fall and will also honor them at an October reception.</p>
<p>The full list of winners is available through <a href="http://www.therecorder.com/id=1202799186959/Meet-Our-2017-Women-Leaders-in-Tech-Law" target="_blank"><em>The Recorder </em>website</a> (subscription required).​​​​​​​​</p>

<p>Fenwick securities enforcement co-chair Michael Dicke spoke with <a href="https://www.law360.com/articles/966446/sec-failed-to-heed-warnings-of-weak-cyber-defenses" target="_blank"><em>Law360</em></a> about the U.S. Government Accountability Office’s warning to the U.S. Securities and Exchange Commission that it had not fully put in place a system for monitoring cyber intrusions on its financial systems.</p>
<p>The GAO’s report was disclosed as SEC Chairman Jay Clayton revealed that the commission’s key electronic filing system for public company disclosures had been hacked in 2016 and may have enabled insider trading.</p>
<p>Some have also raised questions about the pace of the SEC’s disclosures.</p>
<p>Dicke cautioned that each disclosure has to be weighed against the individual facts and circumstances of a particular breach. He noted to Law360 that in many cases, the victim of a breach will wait to collect as many facts as possible before disclosing.</p>
<p>Dicke explained that assurances from Clayton that no personally identifying information was accessed as a result of the breach may have allowed the SEC to delay disclosure. “That’s a lot of the time what triggers notification,” Dicke said.</p>
<p>The full article is available through the<em> </em><a href="https://www.law360.com/articles/966446/sec-failed-to-heed-warnings-of-weak-cyber-defenses" target="_blank"><em>Law360</em> website</a> (subscription required).</p>
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<p><strong>Mountain View, CA (September 26, 2017)</strong> – Fenwick &amp; West is pleased to announce that for the ninth time in 12 years, the firm has been named San Francisco and Silicon Valley’s Tax Firm of the Year by <em>International Tax Revi</em>ew at its annual Americas Tax Awards.</p>
<p><em>International Tax Review </em>also named the firm the U.S. Tax Court Firm of the Year, the firm’s fourth national tax litigation award. Fenwick also received two Tax Deal of the Year awards. Presented at the annual Americas Awards Dinner in New York, the Americas Tax Awards honor top firms in North and South America.</p>
<p>“We are thankful to work with such cutting-edge companies, helping them navigate novel international tax issues and execute complex, industry-shaping deals,” said Adam Halpern, chair of Fenwick’s tax group. “We are humbled to have such a phenomenal team and appreciate this recognition of Fenwick’s position as one of the nation’s top tax practices.”</p>
<p>Fenwick tax lawyers handle complex transfer pricing matters and international tax planning and represent companies in tax dispute resolution and big-ticket federal tax litigation. The group represents both domestic and international clients, having counseled more than 100 Fortune 500 companies.</p>
<p>The Fenwick tax team also handles high-stakes transactional work, including international restructurings, M&amp;A, joint ventures, and spin offs. The firm's Americas Media &amp; Entertainment Tax M&amp;A Deal of the Year award was for its work on Tencent's acquisition of an 84% interest in mobile games giant Supercell that values the company at over $10 billion. Fenwick represented Supercell in the deal.</p>
<p>As <em>Chambers USA</em> recently reported, “Sources highlight the Fenwick team's adept handling of international tax matters, reflecting the firm's phenomenal international practice.” <em>Chambers</em> ranks the firm among the United States’ best tax practices both nationally and globally.</p>
<p>The Fenwick tax group consistently receives recognition from publications including <em>International Tax Review</em>, <em>Euromoney</em>, <em>Chambers USA</em>, <em>Chambers Global</em>, <em>The Legal 500</em> and <em>World’s Leading Tax Advisors</em>.</p>
<p>The full Americas Tax Awards rankings are available through the <a href="http://www.internationaltaxreview.com/Article/3750096/Corporate-Tax/Americas-Tax-Awards-2017-winners-announced.html" target="_blank"><em>International Tax Review </em>website</a>.</p>

<p><em>Law360</em> <a href="https://www.law360.com/articles/966589/fed-circ-strikes-down-gilstrap-s-patent-venue-rules" target="_blank">reported</a> that the U.S. Court of Appeals for the Federal Circuit granted supercomputer maker Cray’s petition for a writ of mandamus and ordered Judge Gilstrap of the U.S. District Court for the Eastern District of Texas to transfer the lawsuit against Cray to another court to be determined on remand.</p>
<p>Following the Supreme Court’s decision in <em>TC Heartland v. Kraft Foods</em>, Cray had filed a renewed motion to transfer based on improper venue. Judge Gilstrap denied Cray’s motion, finding that Cray maintained a regular and established place of business in the Eastern District of Texas based on the private residence of a single remote employee. In doing so, Judge Gilstrap developed a four-factor test for assessing whether a defendant has a regular and established place of business in the district, and this test was later adopted by numerous courts around the country.</p>
<p>Cray subsequently filed a petition for a writ of mandamus, which was granted by the Federal Circuit on September 21, 2017. The Federal Circuit struck down Judge Gilstrap’s four-factor test as being too far removed from the language of the patent venue statute, 28 U.S.C. § 1400(b). The Federal Circuit held that a regular and established place of business (1) must be a physical place in the district; (2) must be a regular and established place of business; and (3) must be the place of the defendant. The Federal Circuit found that the private residence of Cray’s single remote employee did not meet this standard.</p>
<p>This precedential opinion establishes the standard that will control most venue determinations in patent cases going forward and limits abusive forum shopping.</p>
<p>Cray is represented by Fenwick patent litigation partners David Tellekson, Bryan Kohm, and Melanie Mayer, and associates Jonathan McMichael, Yixin Zhang, Eman Sojoodi and Reilly Stoler.</p>
<p>The full article is available through the <a href="https://www.law360.com/articles/966589/fed-circ-strikes-down-gilstrap-s-patent-venue-rules" target="_blank"><em>Law360</em> website</a> (subscription required).</p>
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<p>Fenwick securities enforcement co-chair Michael Dicke spoke with <a href="https://www.theinformation.com/sec-relaxing-private-tech-disclosure-rules?eu=-5Jp1-paBfTUO7IkPOsekA" target="_blank"><em>The Information</em></a> about the U.S. Securities and Exchange Commission’s move to begin relaxing financial disclosure requirements for private companies.</p>
<p>An SEC advisory committee—chaired by Fenwick corporate partner and life sciences practice co-chair Stephen Graham—recommended scaling back the rules that require private companies to share information about their financial performance with employees if they grant their employees more than $5 million in stock awards, <em>The Information </em>reported.</p>
<p>Last summer, the SEC enforcement division increased scrutiny of major private companies and their adherence to these rules. However, enforcement actions under Rule 701 seem less likely now that the rules may be relaxed, Dicke told The Information. He said he expects to see the SEC enforcement division bringing fewer actions alleging mere “foot faults” and technical violations.</p>
<p>The full article is available through <a href="https://www.theinformation.com/sec-relaxing-private-tech-disclosure-rules?eu=-5Jp1-paBfTUO7IkPOsekA" target="_blank"><em>The Information</em> website </a>(subscription required).</p>
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<p>Fenwick intellectual property partner John McNelis spoke with <a href="http://money.cnn.com/2017/09/20/technology/business/trump-dot-autonomous-vehicles/index.html" target="_blank"><em>CNN</em></a> about the updated autonomous driving guidelines from the U.S. Department of Transportation, specifically the fact that consumer privacy issues were only briefly addressed.</p>
<p>The guidelines only referenced consumer privacy issues in footnotes, stating that the Federal Trade Commission ultimately needed to address those issues.</p>
<p>McNelis talked about the massive amounts of data—some of it sensitive information about passengers and pedestrians outside the car—that these vehicles will collect, which raises new privacy issues.</p>
<p>&quot;If you're in an autonomous vehicle, any place you go is now known. I expect there will be cameras in these vehicles. What happens with that data?&quot; McNelis said.</p>
<p>The full article is available through the <a href="http://money.cnn.com/2017/09/20/technology/business/trump-dot-autonomous-vehicles/index.html" target="_blank"><em>CNN </em>website</a>.​</p>

<p>Fenwick intellectual property lawyer Jennifer Bush spoke to <a href="https://www.law360.com/articles/963604/ptab-s-petition-limits-are-good-news-for-patent-owners" target="_blank"><em>Law360</em></a><em> </em>about the specific parameters outlined by an expanded panel of the Patent Trial and Appeal Board for how multiple challenges to the same patent will be evaluated.</p>
<p>Bush noted that the parameters—which at minimum serves as a baseline moving forward—likely limit the number of challenges that a patent ultimately goes through, which could be encouraging for patent owners.</p>
<p>Bush discussed how the panel mentioned that multiple, staggered petitions “are an inefficient use of the inter partes review process and the board’s resources.” Another factor identified takes into account the board’s “finite resources,” <em>Law360</em> reported.</p>
<p>“The way it’s been articulated, both here and in several other prior cases, is that the board’s resources are more fairly expended on initial petitions than on follow-on petitions. And if that’s the way you articulate factor six, that’s pretty much always going to be patent owner-favorable, if you are always favoring initial over follow-on,” Bush said.</p>
<p>The full article is available on the <a href="https://www.law360.com/articles/963604/ptab-s-petition-limits-are-good-news-for-patent-owners" target="_blank"><em>Law360</em> website</a> (subscription required).</p>
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<p>Fenwick privacy and cybersecurity counsel Hanley Chew spoke to <a href="http://thehill.com/policy/cybersecurity/350374-equifax-feels-the-heat-in-washington-for-breach" target="_blank"><em>The Hill</em></a> about some of the legal ramifications related to Equifax’s data breach that potentially exposed the personal information of 143 million Americans.</p>
<p>Chew talked about the multiple class-action lawsuits that have been filed against Equifax, noting that “some of the potential claims that may be brought are negligence, breach of contract, fraud, violations of various state consumer protection statutes, a possible violation of the Fair Credit Reporting Act.”</p>
<p>Top Equifax executives also continue to face scrutiny over stock sales completed before the breach was publicly revealed.</p>
<p>“If it turns out that they did have knowledge of the breach and they sold prior to disclosure of the breach not as part of their regular, predetermined trading plan, then we’re looking at potential insider trading lawsuits and potential law enforcement investigation,” Chew told <em>The Hill</em>.</p>
<p>The full article is available on <a href="http://thehill.com/policy/cybersecurity/350374-equifax-feels-the-heat-in-washington-for-breach" target="_blank"><em>The Hill</em> website</a>.​​​​</p>

<p><strong>Mountain View, CA (Septem​ber 14, 2017)</strong> – Fenwick &amp; West today announced that copyright litigation co-chair Andrew Bridges was recognized by <em>The National Law Journal</em> as an Intellectual Property Trailblazer of 2017.</p>
<p>The <em>Journal </em>honored 49 lawyers from hundreds of nominees, noting that each “had shown a deep passion and perseverance in pursuit of their mission, having achieved remarkable successes along the way.”</p>
<p>The <em>Journal </em>noted Bridges’ trailblazing work representing Diamond Multimedia in the first case to establish the legality of MP3 players (<em>RIAA v. Diamond</em>). “The Audio Home Recording Act was passed in 1992, and this case in 1998 was the first time a lawsuit had been brought under it,” Bridges told the <em>Journal</em>. “It was huge.”</p>
<p>As a result of <em>Diamond</em>, Bridges said, “I get calls from developers of new technologies or online business models when they face attacks because of how other persons use those technologies or online services. I also hear from startup and growing clients when they fear challenges and they want advice on minimizing their risks.”</p>
<p>Bridges, who is a frequent speaker on cutting-edge legal issues, also discussed threats to the future of innovation and technology developments with the publication. “The government and the entertainment industry want to restrict the tools that the public may choose to use for an infinite variety of possible uses,” Bridges said. “The battle between individual power and government and industry interests will be one of the most important battles of our generation.”</p>
<p>Bridges focuses on trial and appellate litigation, arbitration and strategic counseling in high stakes matters for internet, technology and consumer-focused companies related to new business models, media, technologies and communications platforms. <em>Chambers USA</em> ranks Bridges in Band 1 in California for Intellectual Property—Trademark, Copyright, and Trade Secrets work. He also receives recognition in this category from <em>Chambers Global</em> who ranks him among the United States’ leading lawyers. <em>World Trademark Review</em> (<em>WTR1000</em>) also ranks him in the top, “gold,” tier for trademark enforcement and litigation both in California and nationally.</p>
<p>The full profile is available through <a href="http://pdfserver.amlaw.com/nlj/supplements/NLJTB_IP/mobile/index.html#p=6" target="_blank"><em>The National Law Journal</em> website</a>.</p>
<p><strong>About Fenwick &amp; West</strong></p>
<p>Fenwick &amp; West LLP provides comprehensive legal services to ground-breaking technology and life sciences companies—at every stage of their lifecycle—and the investors that partner with them. We craft innovative, cost-effective and practical solutions on issues ranging from venture capital, public offerings, joint ventures, M&amp;A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For more information, please visit <a href="/pages/default.aspx">fenwick.com</a>.</p>
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